Cascades Computer Innovation, LLC v. Motorola Mobility Holdings, Inc. et al

Filing 223

MEMORANDUM OPINION AND ORDER signed by the Honorable Matthew F. Kennelly on 1/6/2015: For the reasons stated in the accompanying decision, the Court grants Samsung and HTC's motion for summary judgment of noninfringement in part and denies the motion in part [Case No. 11 C 4574, dkt. nos. 197 & 198; Case No. 11 C 6235. dkt. no. 152]. The cases are set for a status hearing on January 14, 2015 at 9:30 a.m. for the purpose of setting a trial date and addressing whether there should be separate trials for each case. (mk)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

CASCADES COMPUTER INNOVATION,
LLC,

)
)
)
Plaintiff,
)
)
vs.
)
)
SAMSUNG ELECTRONICS CO. LTD.,
)
)
Defendant.
)
---------------------------------------------------------------)
)
CASCADES COMPUTER INNOVATION,
)
LLC,
)
)
Plaintiff,
)
)
vs.
)
)
HTC CORPORATION,
)
)
Defendant.
)

No. 11 C 4574

No. 11 C 6235

MEMORANDUM OPINION AND ORDER
MATTHEW F. KENNELLY, District Judge:
Cascades Computer Innovation, LLC, has sued Samsung Electronics Co. Ltd.
(Samsung) and HTC Corporation (HTC) for patent infringement, contending that the
defendants manufacture and sell products that infringe U.S. patent number 7,065,750
(the '750 patent). On September 14, 2014, the Court granted summary judgment in
part, concluding that the defendants were entitled to summary judgment of
noninfringement from January 29, 2014, the date of Cascades' settlement and license
agreement with Google, forward. Cascades Computer Innovation, LLC v. Samsung

Elecs. Co. & HTC Corp., Nos. 11 C 4574 & 11 C 6235, 2014 WL 4553226, *5 (N.D. Ill.
Sept. 14, 2014). On September 24, 2014, Samsung and HTC jointly moved for
summary judgment of noninfringement for the time preceding January 29, 2014.
Background
Because defendants have moved for summary judgment, the Court construes all
facts in the light most favorable to Cascades, the nonmoving party. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 255 (1986).
Cascades is the exclusive licensee of the '750 patent, entitled "Method and
Apparatus for Preserving Precise Exceptions in Binary Translated Code." Pl.'s Niro
Decl., Ex. T. As a general overview, the '750 patent describes a method and apparatus
for efficiently executing on one system architecture computer programming code that is
intended for a different architecture. According to the patent specification, "the task of
porting [a] software application to a new platform, based on a different architectural
design, is very complex and time consuming." Id. at 1:42–51. Binary translation, a
technique in which "foreign code is processed by host software to produce new host
code corresponding to the foreign code," is one mechanism for executing foreign code
in a host environment. Id. at 2:1–10, 4:15–17. The patented invention "provides a
system and method for executing binary translated code in a manner that exploits the
explicit parallelism of a host computer system and that supports precise exception
maintenance." Id. at 3:56–59.
One challenge with binary translation is that software programs may include
errors that "mak[e] it difficult to accurately execute the foreign code in the host
environment." Id. at 2:12–13. An exception is one type of error. "An exception is a

2

problem or a change in conditions that causes the processor or computer system to
stop or suspend execution of the program and respond to the problem in a separate
routine, which is often referred to as an exception handler." Id. at 2:22–26. An
exception occurs when a program that is running encounters a condition "that violates a
mathematical or logical rule or attempts to access invalid memory or data." Id. at 2:16–
18. For example, an exception arises when the denominator is zero and a divide
instruction is executed. Id. at 2:37–39.
The patent discloses a mechanism by which exceptions are handled more
efficiently. As the specification explains, the "exception handler in the host architecture
maintains documentation showing which registers must be used to restore the original
foreign register content." Id. at 4:67–5:3. "Thus, when an operation generates an
exception, the exception handler quickly determines the state of the computer system
prior to detection of the exception. Using this information, the exception handler
determines an appropriate solution to the problem." Id. at 5:10–15.
Examples from the specification illustrate how this process works. A host central
processing unit (CPU) "temporarily preserves register data and system status
information before executing instructions that will calculate a variable." Id. at 10:9–12.
With that information, "the exception handler can determine the state of the computer
system immediately prior to the detection of the exception because the present
invention preserves the data and conditions that gave rise to the exception." Id. at
10:20–23. Put differently, when an exception occurs, the exception handler uses the
documentation created during the optimizing binary translation "to recreate the state of
the host computer system at the most recently executed recovery point." Id. at 15:22–

3

27. The availability of prior system state information minimizes the number of side
effects that must be investigated. Id. at 5:16–19.
At issue in this case are two of the '750 patent's eighteen claims. Claim 1
describes the invention's binary translation system, comprising the following six
elements:
a non-optimizing foreign code execution module configured to maintain
dedicated foreign state for each foreign binary operation executed
allowing for the exceptions arisen to be handled precisely; and
an optimizing binary translator configured to translate foreign binary
operations into optimized sequences of host operations in such a
way as to improve the speed of execution of the sequences; and
a host CPU configured to execute the host operations; and
a documentation generator configured to generate a set of
documentations for optimized sequences of host operations,
wherein each documentation describes operations required to
calculate a corresponding foreign state for an appointed point;
a documentation tracker configured to record host operation addresses at
appointed points of the host operation sequences being executed,
wherein, for each host operation address, operations required to
calculate a corresponding foreign state for the host operation
address are added to documentation; and
a recovery mechanism configured to select a documentation in the set of
documentations using a host operation address corresponding to
the selected documentation, wherein the recovery mechanism is
configured to perform the operations saved in the documentation to
calculate the corresponding foreign state for the host operation
address and to continue foreign codes execution in case of the
exception arisen during the execution of the corresponding
optimized host codes.
Id. at 16:5–34. Claim 15 describes a "method of recomputing a dedicated foreign state
in a binary translation system from documentation generated by an optimizing translator
in a case of an exception arising during execution of optimized binary translated code
translated from a foreign code," comprising three elements:
designating a set of recovery points in the optimized binary translated
code during optimized translation of the foreign code, wherein each
recovery point represents a foreign state;
4

generating a set of documentations during the optimized translation of the
foreign code, wherein each documentation in the set of
documentations corresponds to a recovery point in the optimized
binary translated code and describes operations required to
calculate a corresponding foreign state for the recovery point; and
using one of the documentations in the set of documentations
corresponding to executed optimized binary translated code when
an exception arises during its execution to recover a foreign state
corresponding to a recovery point for the exception, wherein the
foreign state is recovered by executing the operations for the one of
the documentations.
Id. at 17:20–18:7.
Cascades accuses Samsung of infringing claims 1 and 15 of the '750 patent and
accuses HTC of infringing claim 15. The accused devices are Android-based
smartphones manufactured by Samsung and HTC that use Dalvik's Just-In-Time (JIT)
Compiler, a component of the Dalvik Virtual Machine (VM) in the Android operating
system. The Dalvik JIT Compiler translates foreign code to host code for execution.
For example, if a programmer writes an application in Java source code (the foreign
code), the Dalvik JIT Compiler translates the instruction from Java to the host code,
which allows the program to run on the Dalvik VM (the host). The Dalvik JIT Compiler
includes routines for handling precise exceptions when translating foreign code to host
code for execution. According to Cascades, the Dalvik JIT Compiler, like the '750
patent, restores a foreign register as part of its precision exception handling routine.
Discussion
A party is entitled to summary judgment if it shows that there is no genuine issue
of material fact and it is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a).
On a motion for summary judgment, the Court views the record in a light most favorable
to the non-moving party and draws all reasonable inferences in that party's favor.

5

Anderson, 477 U.S. at 255. Summary judgment is inappropriate "if the evidence is such
that a reasonable jury could return a verdict for the nonmoving party." Id. at 248.
"Summary judgment of noninfringement may only be granted if, after viewing the
alleged facts in the light most favorable to the nonmovant and drawing all justifiable
inferences in the nonmovant's favor, there is no genuine issue whether the accused
device is encompassed by the patent claims." Novartis Corp. v. Ben Venue Labs., Inc.,
271 F.3d 1043, 1046 (Fed. Cir. 2001).
A.

Disclaimer of the rollback function
Defendants argue that HTC and Samsung's products are incapable of infringing

claims 1 and 15. Defendants rely on the January 2, 2014 claim construction order, in
which the Court ruled that the patentees "unmistakably disclaim[ed] the use of a rollback
function" during prosecution. Cascades Computer Innovation, LLC v. Dell Inc., Nos. 11
C 4574, 11 C 7264, 11 C 6235, 11 C 7223 & 11 C 7249, 2014 WL 26288, *13 (N.D. Ill.
Jan. 2, 2014). HTC and Samsung contend that infringement is not possible because
the Dalvik JIT Compiler operates by rolling back the target registers to recover an earlier
state.
Cascades, in response, argues that the patentees only disclaimed the rollback
function as operated under the Kelly prior art patent. The key distinction, Cascades
contends, is that Kelly handles exceptions by restoring the host's working registers, by
copying them into the most recently committed state of the foreign state. In other
words, the host registers are restored to their previous state. The '750 patent, on the
other hand, handles exceptions by restoring the foreign state registers, by executing
documentation.

6

For the reasons that follow, the Court clarifies that the patentees only disclaimed
use of the rollback functionality as disclosed in Kelly. See Network Commerce, Inc. v.
Microsoft Corp., 422 F.3d 1353, 1358 n.4 (Fed. Cir. 2005) (approving a district court's
clarification of its claim construction order on summary judgment).
To constitute a disavowal of claim scope, the disclaimer must "be both so clear
as to show reasonable clarity and deliberateness, and so unmistakable as to be
unambiguous evidence of disclaimer." Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d
1314, 1325 (Fed. Cir. 2003) (internal citation omitted). Although the patentees clearly
sought to differentiate their invention from Kelly, it is not clear or unambiguous that they
disclaimed all operations that restore an earlier state. This would constitute a much
broader disclaimer than the inventors likely intended.
In order to distinguish their invention from Kelly, the patentees amended their
claims to include "operations required to calculate a corresponding foreign state." The
patentees' submissions to the patent examiner inform the Court's conclusion that they
only disclaimed the Kelly rollback function. In those submissions, the patentees
distinguished the mechanism by which the inventions handle exceptions. When an
exception occurs in the Kelly invention, "the original state in the target registers at the
last update (or commitment) may be recalled to the working registers." Defs.' Claim
Const. Br., Ex. 2 at 75. The '750 patent, on the other hand, "discloses adding
operations required to calculate a corresponding foreign state for the host operation
address are added [sic] to documentation." Id. The '750 patent restores a foreign state,
whereas the Kelly patent does not recover a foreign state. Id. ("[In Kelly] operations are
not executed to recover a foreign state.").

7

In sum, the patentees did not disclaim every form of rollback. The patentees
disclaimed the type of rollback disclosed in the Kelly patent, which the Court construes
to mean rolling back host registers to restore the host state. The Court's construction
applies to claims 1 and 15. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342
(Fed. Cir. 2001) ("[A] claim term should be construed consistently with its appearance in
other places in the same claim or in other claims of the same patent.").
The Court next turns to how the accused devices operate in this regard. In its
final infringement contentions, Cascades stated that the accused devices "rollback the
VM registers to a recovery point." Defs.' Brown Decl., Ex. 1 at 91. Cascades' expert,
Alan Purdy, also acknowledged that the accused devises perform rollback. Defs.' Shih
Decl., Ex. 1 at 275:23–276:13. And defendants' experts confirm that the Dalvik JIT
Compiler rolls back to recover an earlier state. Defs.' Buzbee Decl. ¶¶ 5–6; Defs.'
Goldberg Decl., Ex. A ¶¶ 113–14; Defs.' Medvidovic Decl., Ex. A ¶ 142. Nonetheless,
because patentees only disclaimed rolling back host registers to their previous state, the
description of defendants' mechanism as "rollback" does not entitle them to summary
judgment of noninfringement.
Cascades has pointed to evidence that Samsung's devices produce
documentation that describes "operations required to calculate a corresponding foreign
state" and include a "recovery mechanism [ ] configured . . . to calculate the
corresponding foreign state" as disclosed by claim 1. According to Mr. Purdy's expert
report, in Samsung's devices, the "genCheckCommon()" instruction creates
documentation, which then adds to the documentation the program counter (PC)
reconstruction code. At runtime, the PC reconstruction code "performs operations to

8

calculate the corresponding foreign state (the Dalvik PC) for the appointed point in the
generated host code." Pl.'s Niro Decl., Ex. A ¶¶ 137–45.
Cascades has also pointed to evidence that HTC and Samsung's devices
generate documentation that "describes operations required to calculate a
corresponding foreign state" as disclosed by claim 15 of the patent. That
documentation is comprised of host instructions "that calculate the corresponding
foreign state for the recovery point. The host instructions recover Dalvik VM's foreign
state by calculating the VM's foreign state for the recovery point, by restoring the Dalvik
VM's PC." Id. ¶¶ 158–61. This evidence is sufficient to create a genuine issue of
material fact as to whether the accused devices perform a rollback to recover a foreign
state. Accordingly, the Court denies summary judgment of noninfringement as to
whether the accused devices perform "operations required to calculate a corresponding
foreign state."
B.

"Calculate"
Defendants also argue that Samsung and HTC's devices are incapable of

infringing because the documentation generated by the Dalvik JIT Compiler does not
describe operations that "calculate" any values as disclosed by claims 1 and 15. Pl.'s
Niro Decl., Ex. T at 16:16–18; 17:31–34. Cascades identifies the "documentation" as
the "loadConstant" instruction, but defendants argue that the instruction does not
"calculate" anything because it simply copies a value from one location and moves it to
another. Defendants contend that "calculate" in claims 1 and 15 should be construed to
require more than copying and moving a value.

9

Cascades does not challenge defendants' description of the accused technology.
Instead, it argues that "calculate" means "everything a computer does." Pl.'s Mem. in
Opp. to Mot. for Summ. J. at 13. According to Cascades, the loadConstant instruction
restores the foreign state by putting the previously stored Dalvik VM's program counter
value back into the host register, which is a type of calculation.
The parties offer different definitions of the term "calculate" based on conflicting
dictionary definitions and expert testimony. But in construing a patent's claim terms, the
Court must "first look to, and primarily rely on, the intrinsic evidence, including the
claims themselves, the specification, and the prosecution history of the patent, which is
usually dispositive." Sunovion Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d 1271,
1276 (Fed. Cir. 2013). See also Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d
1570, 1578 (Fed. Cir. 1995) ("[T]he definition in the patent documents controls the claim
interpretation. . . . Thus, we may not consider Southwall's opinion expert testimony as
we interpret claim 14 as a matter of law.").
The term "calculate" in claims 1 and 15 refers to the mechanism by which the
system determines a "corresponding foreign state" when an exception is encountered.
Although "calculate" is not defined in the claims or specification, the specification offers
guidance as to how the foreign state is determined. Specifically, the specification states
the following:
Performance improvements achieved by [the] optimizing binary translator
processor [ ] may be significantly and negatively impacted when an
exception is detected and variables must be calculated. The present
invention . . . sav[es] the contents of registers in temporary locations
before executing instructions that could generate an exception. An
exception handler uses the information in the temporary location upon
detection of the exception. The exception handler recovers the contents
of the registers, resets the status flags to a known state and recovers from
10

the error condition in a manner that minimize[s] the side effects that must
be resolved.
Pl.'s Niro Decl., Ex. T at 7:56–67. In other words, the invention does not
individually calculate variables each time an exception is detected; rather,
register contents are saved for later use when an exception occurs. The
exception handler then determines the foreign state, or the "known state" to
which status flags are reset, by "recover[ing] the contents of the registers" that
were previously saved. "[T]he exception handler can determine the state of the
computer system immediately prior to the detection of the exception because the
present invention preserves the data and conditions that gave rise to the
exception." Id. at 10:20–23.
Operation of the exception handler is also described in the specification as
follows:
[The host exception handler] takes wide instruction address from the
[Recovery Point] register and extracts correspondent documentation for
the Recovery Point being addressed by the value of instruction pointer in
the [Recovery Point] register. On the base of this documentation the
exception handler determines a foreign operation which the process of
recovery [ ] should be started from.
Id. at 14:26–32.
The language of claim 1 and patentees' representations to the Patent and
Trademark Office also reveal that the invention's exception handler operates by
accessing stored register data and system information to determine the foreign state.
Claim 1 discloses that "the recovery mechanism is configured to perform the operations
saved in the documentation to calculate the corresponding foreign state." Pl.'s Niro
Decl., Ex. T at 16:29–31. During the prosecution of the patent, the patentees stated

11

that a key distinction between the Kelly patent and the '750 patent is that the latter
"store[s] a set of documentations each including operations for host operation
addresses, and then [ ] determine[s] a documentation where operations are executed to
recover foreign state." Defs.' Claim Const. Br., Ex. 2 at 75.
The language used to describe how the system identifies the foreign recovery
point includes the following: "the exception handler determines a foreign operation"; it
"can determine the state" immediately before the exception; it "determine[s] a
documentation . . . to recover foreign state"; and it "recovers" and "resets" the status
flags to a known state. It is clear from these descriptions that the term "calculate" refers
to the process by which the temporarily stored register contents are used to determine a
corresponding foreign state. The Court therefore concludes that the term "calculate," as
used in the claims, simply means "determine."
Cascades has offered sufficient evidence to raise a genuine issue of material fact
as to whether the Dalvik JIT Compiler "calculate[s] a corresponding foreign state" or
includes a mechanism configured to "calculate a corresponding foreign state" as
disclosed by claims 1 and 15 of the patent. The parties agree that when the
loadConstant instruction is invoked, it "take[s] the value it receives in register 0 and puts
that value in r4." Pl.'s Resp. to Defs.' LR 56.1(a)(3) Stmt. ¶¶ 51–52; Defs.' Shih Decl,
Ex. 1 at 962:8–963:5. During Mr. Purdy's deposition, in which he discussed the
requirements for showing infringement of the '750 patent, he testified that when the
foreign program counter is restored, the JIT Compiler "has calculated the displacement
and the base address and taken that sum and cached that, stored that in only one
place, and that's in the [ ] load immediate instruction that is generated." Pl.'s Niro Decl.,

12

Ex. G at 576:8–19. Cascades has pointed to evidence that the documentation (the
LoadConstant instruction) stores the operations required to calculate the foreign state,
and that this information is later used to determine the recovery point. Applying the
Court's construction, a genuine issue of material fact exists as to whether the accused
devices "calculate" a foreign state.
C.

Direct infringement of claim 15
HTC and Samsung argue that they did not directly infringe claim 15, because

Cascades cannot show that all steps of the patented method were performed in the
United States. To prove direct infringement of a method claim, a person must have
practiced all steps of the claimed method in the United States. NTP, Inc. v. Research In
Motion, Ltd., 418 F.3d 1282, 1318 (Fed. Cir. 2005); 35 U.S.C. § 271(a).
Both HTC and Samsung are foreign companies with offices in the United States.
To support its claim that defendants infringed claim 15 in the United States, Cascades
cites Internet postings for employment opportunities in this country, which purport to
show that defendants' smartphones are tested in the United States. Although these
documents indicate that Samsung and HTC recruit software engineers to develop and
test Android software for defendants' mobile devices in the United States, they only
refer to smartphone testing generally. The postings do not support a reasonable
inference that defendants tested or operated the Dalvik JIT Compiler, as opposed to
other aspects of their phones, in this country. Cascades asks the Court to infer that
defendants must have tested the Dalvik JIT Compiler because some product testing is
done in the United States. But it has not offered enough evidence to reasonably permit
that inference.

13

Cascades also offers evidence of purported product demonstrations in the United
States. Cascades cites the LinkedIn profile of Samsung's Chief Product Officer, who
works in Dallas. Again, this evidence does not support the inference that all three
elements of the method were performed in this country. Cascades refers to testimony
that HTC held a presentation meeting in New York. But that witness admitted that she
did not know whether HTC's smartphones were demonstrated during the meeting.
Further, the meeting took place in 2014, a period of time that is no longer at issue based
on the Court's September 2014 summary judgment ruling. Finally, Cascades points to a
video presentation that was streamed on the Internet in which Samsung representatives
demonstrated a smartphone. But according to the evidence provided to the Court, the
presentation took place in Hong Kong. This evidence also fails to support the inference
that the defendants performed the claimed method in the United States.
Because Cascades has not offered sufficient evidence to support an inference
that defendants performed the claimed method in the United States, the Court grants
defendants' motion for summary judgment of noninfringement as to direct infringement
of claim 15.
D.

Induced infringement of claim 15
Cascades alleges that HTC and Samsung induced infringement of claim 15.

Under 35 U.S.C. § 271(b), "[w]hoever actively induces infringement of a patent shall be
liable as an infringer." 35 U.S.C. § 271(b). "In order to succeed on a claim of
inducement, the patentee must show, first that there has been direct infringement, and
second, that the alleged infringer knowingly induced infringement and possessed
specific intent to encourage another's infringement." MEMC Elec. Materials, Inc. v.

14

Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed. Cir. 2005) (internal
quotation marks omitted). Defendants argue that Cascades fails to raise a genuine
issue of material fact as to both of these requirements. They contend that Cascades
has failed to identify an instance of direct infringement by a third party and has offered
no evidence of defendants' specific intent to encourage infringement. Defendants also
ask the Court to grant summary judgment of no indirect infringement prior to the filing of
the original complaints in this case, even if the Court denies summary judgment as to
indirect infringement.
1.

Notice

Defendants contend that because they did not have notice of the '750 patent
prior to the filing of the original complaints, they cannot be held liable for induced
infringement before that date. Cascades argues that Samsung was notified as early as
April 7, 2011. Cascades concedes that HTC was not notified of infringement prior to
July 6, 2011, and HTC does not challenge this contention, so the Court concludes that
HTC was on notice as of that date.
To be liable for induced infringement, a defendant must have knowledge that the
induced acts constitute patent infringement and must know "of the existence of the
patent that is infringed." Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060,
2068 (2011). To show notice, Cascades offers an April 7, 2011 letter that was sent to
the Executive Vice President of Samsung's IP Center. In that letter, Cascades notified
Samsung of some of its patent licenses but did not discuss the '750 patent in detail.
Rather, Cascades stated that "[w]e want to draw your attention to just five of the 39
patents in the Cascade portfolio." Pl.'s Niro Decl., Ex. O at 4. But the '750 patent was

15

not one of the five patents discussed in the letter; it was merely listed in an appendix,
without explanation. Pl.'s Niro Decl., Ex. O at 10. This communication is insufficient to
create a triable issue as to Samsung's knowledge at that time.
Cascades offers an e-mail dated June 15, 2011, which specifically describes
infringement contentions concerning the '750 patent. That email reads, "Attached is a
detailed claim chart applying claim 15 of U.S. Patent No. 7,065,750" to Samsung's
products. Pl.'s Niro Decl., Ex. Q. This communication was sufficient to put Samsung on
notice of the '750 patent. Accordingly, Samsung can be liable for induced infringement
from June 15, 2011 through January 29, 2014. HTC can be liable for induced
infringement from July 6, 2011 through January 29, 2014. The Court grants summary
judgment of no indirect infringement before those dates.
2.

Direct infringement

Defendants argue that there is no evidence of direct infringement. "Liability for
either active inducement of infringement or contributory infringement is dependent upon
the existence of direct infringement." DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1303
(Fed. Cir. 2006) (quoting Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed. Cir.
1993)). To survive summary judgment, Cascades must point to evidence sufficient to
raise a genuine issue of material fact that users infringe claim 15 when they use the
accused devises.
"Direct infringement can be proven by circumstantial evidence." Toshiba Corp. v.
Imation Corp., 681 F.3d 1358, 1364 (Fed. Cir. 2012) (internal quotation marks omitted).
Sale of an allegedly infringing product is sufficient to create a triable issue of fact if the
instructions teach an infringing use or if the device can only be used in an infringing

16

manner. See id. at 1365 ("[W]here an alleged infringer designs a product for use in an
infringing way and instructs users to use the product in an infringing way, there is
sufficient evidence for a jury to find direct infringement."). In the cases cited by
defendants where the Federal Circuit affirmed findings of no inducement, the accused
devices could be used in an infringing or a noninfringing manner and customers were
not instructed on infringing use. See ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501
F.3d 1307, 1313 (Fed. Cir. 2007) ("Here, the parties do not dispute that the accused
device can be operated in either of two modes . . . . Because the accused device can
be used at any given time in a noninfringing manner, the accused device does not
necessarily infringe."); Mirror Worlds, LLC v. Apple Inc., 692 F.3d 1351, 1360–61 (Fed.
Cir. 2012) ("The manuals teach customers each step of the claimed method only in
isolation and thus do not suffice . . . for showing inducement of infringement.").
In this case, it is undisputed that the Dalvik JIT Compiler is operational by default
in defendants' devices. Defs.' Goldberg Decl., Ex. A at 5 (referring to the "Default Dalvik
functionality in the accused HTC products"). Although plaintiff's expert states that "the
user or manufacturer can turn off the Dalvik JIT Compiler" in the accused devices, Pl.'s
Niro Decl., Ex. A ¶ 13, defendants previously argued, and this Court agreed, that the
accused devices have no reasonable noninfringing uses. Cascades Computer
Innovation, 2014 WL 4553226, at *5 (concluding that the patent exhaustion doctrine
applies because the Android operating system has no reasonable noninfringing uses
and includes all inventive aspects of the claimed method). In fact, defendants
encourage use of the Dalvik JIT Compiler. In an exhibit that was previously submitted
to the Court, one of Cascades' experts reports that the Android website contains the

17

following warning: "Important: Dalvik must remain the default runtime or you risk
breaking your Android implementations and third-party applications." Defs.' Reply in
Supp. of Mot. for Summ. J. on Exhaustion, Ex. 21 ¶ 141. The same expert reports that
"Android suggests that Dalvik remains as the default runtime against the risk of
malfunctioning regarding Android implementations and third-party applications." Id.
¶ 52 (internal quotation marks omitted). Even if a user can turn off the Dalvik JIT
Compiler, a reasonable jury could infer that most consumers do not do so based on
these instructions. Because the Dalvik JIT Compiler is installed and enabled on
defendants' devices, a jury could reasonably infer that at least some of defendants'
customers have used the technology.
It also appears that the noninfringing use has been disabled in some of
defendants' devices. Mr. Purdy states in his report that Samsung has modified some of
its devices to remove the user's ability to switch from Dalvik to a noninfringing use. Pl.'s
Niro Decl., Ex. A ¶ 18. Similarly, HTC sells products that do not allow users to switch
from Dalvik to a noninfringing use. Pl.'s Niro Decl., Ex. N at 46:19–24. This evidence
supports the inference that at least one person has used the accused technology.
A jury could also reasonably infer that exceptions occur during operation of the
Dalvik JIT Compiler. Mr. Purdy encountered exceptions when he tested the Android
source code. Further, he identified "655 *.java files that contain Java's 'try . . . catch'
structures—a mechanism for fielding raised exceptions, and a total of at least 2300 'try
. . . catch' structures." Pl.'s Niro Decl., Ex. A ¶ 15. The fact that Java-based
applications handle exceptions when operated and the fact that the Dalvik JIT compiler
is enabled by default support the inference that exceptions occur when customers use

18

Samsung and HTC smartphones. This is sufficient to raise a triable issue as to whether
customers perform the claimed method.
In Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009),
the Federal Circuit considered post-trial motions challenging a jury's finding of induced
infringement. In that case, the plaintiff presented no direct evidence that any users,
other than plaintiff's expert, performed the claimed method. Id. at 1318. The plaintiff
presented circumstantial evidence, including "evidence relating to the extensive sales of
Microsoft products and the dissemination of instruction manuals for the Microsoft
products." Id. Although the court found the evidence to be weak, it ruled that the jury
was not "unreasonable in finding that Microsoft possessed the requisite intent to induce"
and "could have reasonably concluded that . . . more likely than not one person
somewhere in the United States had performed the claimed method." Id. at 1323.
Here, the Android website instructs customers not to disable the Dalvik JIT Compiler,
which runs whenever a foreign application is translated on a smartphone. As in Lucent,
a reasonable jury might infer that at least one user performed the claimed method given
the evidence of wide distribution of defendants' products and the default operation of the
Dalvik JIT Compiler. A genuine issue of fact therefore exists as to whether defendants'
customers directly infringed the '750 patent.
3.

Intent

To prove inducement, Cascades must also show that the defendants knowingly
induced infringement and possessed specific intent to encourage another's

19

infringement. DSU Med. Corp., 471 F.3d at 1306 (en banc).1 "The plaintiff has the
burden of showing that the alleged infringer's actions induced infringing acts and that he
knew or should have known his actions would induce actual infringements." Id. (internal
quotation marks omitted).
Defendants argue that Cascades has not offered evidence of specific intent to
induce infringement. "Intent can be shown by circumstantial evidence, but the mere
knowledge of possible infringement will not suffice." Vita-Mix Corp. v. Basic Holding,
Inc., 581 F.3d 1317, 1328 (Fed. Cir. 2009). As the Court concluded, Samsung and HTC
knew about the patent beginning in June and July 2011, respectively. As to whether
defendants knew their actions would induce infringement, it is reasonable to infer that
HTC and Samsung include the Dalvik JIT Compiler in their devices intending that it be
used to translate foreign code and handle exceptions. Defendants offer Java-based
smartphone applications, some of which they develop themselves. This fact further
supports the inference that HTC and Samsung intend customers will perform the
claimed method when they run applications.
In Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325 (Fed. Cir. 2008), the
Federal Circuit, reversing a district court's decision to grant summary judgment of
noninfringement, discussed the specific intent requirement for inducement. The court
stated that "the distribution of a product can itself give rise to liability where evidence
shows that the distributor intended and encouraged the product to be used to infringe."
Id. at 1343 (internal quotation marks and citations omitted). Further, "[t]o the extent that

1

Only Section III.B of the Federal Circuit's opinion, in which the court discussed the
intent requirement for inducement, was considered by the court sitting en banc. See
DSU Med. Corp., 471 F.3d at 1304–06 (en banc).
20

the components [in the accused device] do not in fact have a purpose other than the
performance of infringing functions under normal use conditions, such evidence would
create a material issue of fact regarding [the defendant's] intent that its drives be used
to infringe." Id. In this case, it is hard to imagine why the defendants would include the
Dalvik JIT Compiler in their smartphones if not for the purpose of translating foreign
source code and handling exceptions. Because it would be reasonable for a jury to
infer that the defendants intended this technology to be used, Cascades has raised a
genuine issue of material fact as to whether HTC and Samsung possessed specific
intent to encourage infringement.
E.

Willful infringement
Samsung requests summary judgment of no willful infringement.2 35 U.S.C.

§ 284 allows a court to enhance a prevailing plaintiff's damage award "up to three times
the amount found or assessed." 35 U.S.C. § 284. The Federal Circuit has held "that an
award of enhanced damages requires a showing of willful infringement." In re Seagate
Tech., LLC, 497 F.3d 1360, 1368 (Fed. Cir. 2007) (en banc). To establish willful
infringement, a plaintiff must prove two elements by clear and convincing evidence.
First, the plaintiff must show "that the infringer acted despite an objectively high
likelihood that its actions constituted infringement of a valid patent." Id. at 1371. If
objective recklessness is found, the plaintiff "must also demonstrate that this objectivelydefined risk (determined by the record developed in the infringement proceeding) was
either known or so obvious that it should have been known to the accused infringer." Id.

2

Cascades has not alleged that HTC willfully infringed the patent.
21

The Court recognizes that "the ultimate legal question of whether a reasonable
person would have considered there to be a high likelihood of infringement of a valid
patent should always be decided as a matter of law by the judge." Bard Peripheral
Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1008 (Fed. Cir. 2012).
Nonetheless, factual determinations will inform the Court's objective reasonableness
analysis in this case. Id. at 1007 ("When the objective prong turns on fact questions . . .
the judge remains the final arbiter of whether the defense was reasonable, even when
the underlying fact question is sent to a jury."). The Court will defer deciding whether
Samsung's infringement defenses are reasonable as a matter of law until after the facts
are presented at trial. See HTC Corp. v. Tech. Props. Ltd., No. 5:08-CV-00882-PSG,
2013 WL 5225043, *8 (N.D. Cal. Sept. 17, 2013) (denying summary judgment on the
issue of willfulness because "where factfinding is necessary, trial courts generally
reserve willfulness until after a full presentation of the evidence on the record to the
jury").
Conclusion
For the foregoing reasons, the Court grants Samsung and HTC's motion for
summary judgment of noninfringement in part and denies the motion in part [Case No.
11 C 4574, dkt. nos. 197 & 198; Case No. 11 C 6235. dkt. no. 152]. The cases are set
for a status hearing on January 14, 2015 at 9:30 a.m. for the purpose of setting a trial
date and addressing whether there should be separate trials for each case.

________________________________
MATTHEW F. KENNELLY
United States District Judge
Date: January 6, 2015
22