Kaufman v. Microsoft Corporation

Filing 166

ORDER GRANTING IN PART AND DENYING IN PART MOTION FOR SUMMARY JUDGMENT granting in part and denying in part 111 Motion for Summary Judgment: For the foregoing reasons, Defendant's motion for summary judgment is granted in part and denied in p art. The motion is granted insofar as the claim for willful infringement is dismissed. The motion is denied in all other respects, and trial will proceed as scheduled on the remaining claims. The Clerk is directed to terminate the open motion (ECF No. 111). (Signed by Judge Alvin K. Hellerstein on 1/22/2020) (jwh)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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USDC SDNY
DOCUMENT
ELECTRONICALLY FILED
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DATE FILED: I }7-2,_/Z6 2f',
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ORDER GRANTING IN PART
AND DENYING IN PART
MOTION FOR SUMMARY
JUDGMENT

MICHAEL PHILIP KAUFMAN,
Plaintiff,
-against-

16 Civ. 2880 (AKH)
MICROSOFT CORPORATION,
Defendant.
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AL VINK. HELLERSTEIN, U.S.D.J.:
This is an action brought by the owner of U.S. Patent No. 7,885,981 (the '"981
Patent"), Michael Kaufman ("Plaintiff' or "Kaufman"). Plaintiff alleges that Defendant
Microsoft Corporation's ("Defendant" or "Microsoft") software infringes the '981 Patent.
Defendant moves for summary judgment. I held oral argument on Defendant's motion on
January 16, 2020. For the reasons stated at oral argument and for the reasons that follow,
Defendant's motion is granted in part and denied in part.
BACKGROUND

The '981 patent was filed on October 26, 2007 and issued on February 8, 2011.
Plaintiffs Rule 56.1 Statement in Opposition to Microsoft's Motion for Summary Judgment,
ECF No. 127 ("Pl's 56.1") 12. 1 The invention described in the '981 Patent relates to the field of
data processing, and more specifically to relational computer databases. The object of the
invention is, among other things, "to provide a complete and fully functional user interface (UI)

1

Facts are taken from Defendant's Rule 56.1 Statement of Undisputed Material Facts in Support of Microsoft' s
Motion for Summary Judgment, ECF No. 114; Plaintiffs Rule 56.1 Statement in Opposition to Microsoft's Motion
for Summary Judgment, ECF No. 127; and supporting materials referenced therein. Citations to PJ ' s 56.1 can be
considered to incorporate both Defendant' s statements of fact and Plaintiffs responses.

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for any arbitrarily complex or large database schema, without any custom software
programming." Pl ' s 56.1, 3; see also ECF No. 40-6 (together with ECF No. 40-7, the "' 981
Patent") at col. 3:8-12.
A key feature of the invention is the automated nature of certain steps. See Pl' s 56.1 , 7.
The term "automatically generating" appears in the preamble to each of the independent claims.
Pl's 56.1 , , 4-6; see also '981 Patent at col. 377:3, 377:46-57, 378:23-24. Of most relevance to
Defendant's argument here, the act of "scan[ning] [a] database," described in limitation (b) of
each of the independent claims, occurs "automatically." Pl ' s 56.1 ,, 4-7; see also ' 981 Patent at
col. 377:2-37, 377:46-378:54.
Each independent claim requires "a user interface paradigm comprising a set of modes
for interacting with a given database table, said modes comprising create, retrieve, update and
delete, and a corresponding display format for each mode." 2 Pl ' s 56.1 , , 4-6; see also ' 981
Patent at col. 377:14-19, 377:58-378:4, 378:32-36. Furthermore, the invention "integrates into
each said mode display processes for representing, navigating, and managing said relationships
across tables." Pl ' s 56.1 ,, 4-6; see also ' 981 Patent at col. 377:25-38, 378:9-21 , 378:41-54. In
summary, three functions (i.e., representing, navigating, and managing) are integrated into four
mode displays (i.e., create, retrieve, update, and delete).
The '981 Patent states, "The preferred embodiment of the invention ... corresponds in
most respects to an implementation of the invention being developed under the trademark
SCHEMALIVE™ which is herein referred to as the ' reference implementation."' ' 981 Patent at
col. 4:34-38. The complete source code for that reference implementation (the "Schemalive
Reference Implementation") is reproduced in the ' 981 Patent. Pl ' s 56.1, 31. The ' 981 Patent

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Following a Markman hearing, I issued a claim construction order. ECF No. 69. The portions of the claims
requiring construction, where used here, have the definitions assigned in the claim construction order.

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also includes figures depicting the Schemalive Reference Implementation's mode displays. Pl's
56.1

,r 32.

The source code for the Schemalive Reference Implementation does not perform the

delete functionality, and the figures do not show a delete mode display, as Kaufman had not yet
incorporated the delete functionality in the Schemalive Reference Implementation. Pl' s 56.1

,r,r

32, 34. The '981 Patent does, however, include instructions on how to add a delete mode to the
Schemalive Reference Implementation. Pl's 56.1

,r 32.

Plaintiff alleges that Microsoft's Dynamic Data infringes the '981 Patent. Pl's 56.1
Microsoft actively developed Dynamic Data between 2007 and 2009. Pl's 56.1

,r 15.

creates the Dynamic Data application from a tool called Visual Studio. Pl's 56.1

,r 17.

,r 14.

A user
To scan a

database, the user must invoke Object Relational Modeler and click through a series of prompts
and windows, essentially telling the software which database to scan. Pl' s 56.1

,r,r 19-20.

Defendant contends, and Plaintiff contests, that additional manual steps are necessary at the end
of the scanning process. Pl's 56.1

,r 21.

The parties agree that some allegedly infringing user interfaces in Dynamic Data do not
integrate all three claimed processes (representing, navigating, and managing). Pl's 56.1

,r,r 24,

26-27. For example, Dynamic Data's purported retrieve mode does not have a process for
managing. Rather, Plaintiff alleges, each allegedly infringing display integrates at least one of
the three claimed processes. Pl's 56.1

,r 24.

The instant suit is not the first time Microsoft has come across Kaufman's work. First, in
2006, the United States Patent and Trademark Office ("USPTO") cited one of Kaufman's patent
applications when it rejected a Microsoft patent application. Pl' s 56.1

,r 3 8; Declaration of Leah

J. Edelman in Support of Microsoft's Motion for Summary Judgment, ECF No. 113 ("Edelman
Deel."), Ex. J at 32. The cited Kaufman application, which Kaufman calls the "parent to the

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'981 Patent," did not have the same claims as the '981 Patent. Pl ' s 56.1, 38. Second, when
European authorities rejected a Microsoft patent application in 2009, they cited a 2002 Patent
Cooperation Treaty application made by Kaufman. Pl' s 56.1, 39; Edelman Deel., Ex. L. The
cited Kaufman application again did not have the issued claims of ' 981 Patent, but Kaufman
contends they were substantively similar. Pl ' s 56.1, 39. Third, in 2011 , Microsoft cited the
application for the ' 981 patent (the "' 981 Patent Application") in an information disclosure
statement submitted to the USPTO. Pl ' s 56.1, 40; Edelman Deel., Ex. J at 30-31. Kaufman
says the claims in the ' 981 Patent Application were nearly identical to those issued in the ' 981
Patent. Pl's 56.1, 40. Fourth, in 2014, the USPTO cited the ' 981 Patent Application when it
rejected a Microsoft patent application. Pl' s 56.1 , 40; Edelman Deel, Ex. J at 31. Outside
counsel handled Microsoft's communications with the USPTO. Pl ' s 56.1, 41. None of the
aforementioned Microsoft patent applications concerned Dynamic Data.
On April 18, 2016, Plaintiff filed the instant suit, bringing claims for direct infringement,
inducing infringement, contributory infringement, and willful infringement.
DISCUSSION

Summary judgment should be granted where "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). A genuine issue of material fact exists "if the evidence is such that a
reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). In ruling on a motion for summary judgment, the Court "is ...

required to view the evidence in the light most favorable to the party opposing summary
judgment, to draw all reasonable inferences in favor of that party, and to eschew credibility
assessments." Amnesty Arn. v. Town of West Hartford, 361 F.3d 113, 122 (2d Cir. 2004).

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I.

Non-Infringement
"To establish literal infringement, every limitation set forth in a claim must be

found in an accused product, exactly." Southwall Techs., Inc. v. Cardinal JG Co., 54 F.3d 1570,
1575 (Fed. Cir. 1995). This "requires a .determination that every claim limitation or its
equivalent be found in the accused device. Those determinations are questions of fact, and on
summary judgment, the issue is whether there is no genuine issue of material fact regarding
infringement." In re Gabapentin Patent Litig., 503 F.3d 1254, 1259 (Fed. Cir. 2007) (internal
citations omitted); see also Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998)
(" [L]iteral infringement issue is properly decided upon summary judgment when no genuine
issue of material fact exists, in particular, when no reasonable jury could find that every
limitation recited in the properly construed claim either is or is not found in the accused
device."). Defendant contends that Dynamic Data does not infringe the ' 981 Patent as a matter
of law for two reasons. First, Defendant says, Dynamic Data does not "automatically" "scan said
database and apply a body of rules." See '981 Patent at col. 377:2-37, 377:46-378:54. Second,
not every allegedly infringing mode display (i.e., create, retrieve, update, and delete) integrates
each and every claimed process (i.e., representing, navigating, and managing).
Issues of material fact preclude summary judgment on the question of whether
Dynamic Data performs the prescribed steps automatically. The parties do not dispute the plain
and ordinary meaning of automatic, but they do dispute what steps actually comprise the process
of "scan[ning] said database and apply[ing] a body of rules," as well as whether those steps are
"automatic[ ]" in Dynamic Data and related tools. These are questions of fact appropriately
resolved by ajury.

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Defendant' s second argument for summary judgment on the issue of infringement
also fails . The language of the asserted claims 3 does not compel the conclusion that each and
every one of the four mode displays must integrate each and every one of the three processes.
Rather, each of the four mode displays must integrate processes, which include representing,
navigating, and managing. The question at hand is whether each mode display must integrate
processes for representing, navigating, and managing, or whether, as Plaintiff insists, one
function, for example, managing, may be absent from a particular mode, yet be present in
others-whether "and" may be read as "and/or." The answer must arise from the context of the
patent as a whole. For example, a managing functionality would be nonsensical and useless in a
retrieve mode. That is why Dynamic Data does not include the managing functionality in its
retrieve mode, nor do any purported embodiments.
The applicable precedent suggests that in these circumstances, "and" can mean
"and/or." See Ortho-McNeil Pharm., Inc. v. My lan Labs. , Inc., 520 F.3d 1358, 1361-63 (Fed.
Cir. 2008) (finding district court properly construed "and" to mean "or" in order "to give proper
meaning to the claim in light of the language and intrinsic evidence"); SIMO Holdings Inc. v.

Hong Kong uCloudlinkNetwork Tech. Ltd. , 376 F. Supp. 3d 369,381 (S.D.N.Y. 2019)
(interpreting "and" as disjunctive "and/or" after taking into account "the patent as a whole" and
noting "it is not uncommon for courts to interpret the word 'and' in a patent claim to encompass
the disjunctive when such an interpretation is necessary to accommodate the specification and
preferred embodiments"). I cannot decide this issue as a matter of law prior to a trial developing

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Under limitation (c) of each independent claim, the invention "integrates into each said mode display processes for
representing, navigating, and managing said relationships across tables." Pl ' s 56.1 ,r,r 4-6; see also ' 981 Patent at
col. 377:25-38, 378:9-21 , 378:41-54.

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the facts surrounding the context of the '981 Patent and Defendant's allegedly infringing
processes.

II.

Embodiment
Defendant's motion for summary judgment on the issue of embodiment is denied

as moot in light of my ruling at the final pretrial conference that Plaintiff may not introduce
Schemalive at trial. Embodiment in the form of Plaintiffs own product is not an essential
element of an infringement claim. See Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d
888, 902 (Fed. Cir. 1984) ("A patentee need produce no commercial device. Infringement is
determined by comparison with the patentee's claimed invention, not with its marketed
product."). Furthermore, "[i]nfringement ... is determined by comparing an accused product not
with a preferred embodiment described in the specification, or with a commercialized
embodiment of the patentee, but with the properly and previously construed claims in suit." SRI
Int'! v. Matsushita Elec. Corp. ofAm., 775 F.2d 1107, 1121 (Fed. Cir. 1985). If Schemalive

were introduced at trial, the parties would have to spend excessive time explaining Schemalive
and how it practices the ' 981 Patent. This would confuse the jury and risk creating a trial
focused on comparing the allegedly infringing product to Schemalive instead of to the patent
claims. See Fed. R. Evid. 403.

III.

Willfulness
"It is well-settled that knowledge of the non-infringer's patent is a necessary

element to a claim of willful infringement." Olaf Soot Design, LLC v. Daktronics, Inc., 325 F.
Supp. 3d 456,461 (S.D.N.Y. 2018); see also Verint Sys. Inc. v. Red Box Recorders Ltd. , No. 14cv-5403, 2016 WL 7177844, at *2 (S.D.N.Y. Dec. 7, 2016) ("For a finding of willful or induced
infringement, the law requires that a defendant have had actual knowledge of the patents at

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issue."). Summary judgment is appropriate on a willful infringement claim "[i]f Defendants can
point to an absence ofrecord evidence concerning its knowledge of the [patent-in-suit] and its
claims." Olaf Soot Design, 325 F. Supp. 3d at 461. Nothing in the record establishes
Microsoft's pre-suit knowledge of the '981 Patent.
Plaintiff points to evidence showing that the ' 981 Patent Application and
Kaufman publications for related technologies were cited in communications between Microsoft
and patent authorities. However, this is insufficient as a matter of law. Knowledge of patent
applications, even applications for the patent at issue, do not establish knowledge of the patent.

State Indus., Inc. v. A.O. Smith Corp. , 751 F.2d 1226, 1236 (Fed. Cir. 1985); Verint Sys. Inc.,
2016 WL 7177844, at *2-3. In Verint Systems, the plaintiff provided evidence that the defendant
received knowledge of the patent application after the actual patent had issued. 2016 WL
7177844, at *2. That evidence, combined with evidence thatthe defendant looked into
plaintiffs patents that were not at issue in the suit, could not "support an inference that [the
defendant] knew that the particular patents at issue on [the] motion had in fact issued." Id.
Thus, the Court granted the defendant' s motion for summary judgment on the willful
infringement claim. Id. at 2-3.
Plaintiff also argues that the claim of willful infringement should survive
summary judgment because the filing of the present suit gave Defendant actual knowledge of the
' 981 Patent. Plaintiffs theory is without merit, even if another district court has seemingly
endorsed it. See Huawei Techns. Co. Ltd. v. T-Mobile US, Inc., No. 16-cv-00052, 2017 WL
1129951 , at *4 (E.D. Tex. Feb. 21, 2017). It is not the law in this district. See Verint, 2016 WL
7177844, at *2-3 (granting summary judgment where " [t]here is no direct evidence in the record
... that [the defendant] had pre-suit knowledge that the [patents-in-suit] had issued" (emphasis

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added)). Plaintiff fails to cite any ruling by the Federal Court of Appeals that supports his
proposition.
CONCLUSION
For the foregoing reasons, Defendant's motion for summary judgment is granted in part
and denied in part. The motion is granted insofar as the claim for willful infringement is
dismissed. The motion is denied in all other respects, and trial will proceed as scheduled on the
remaining claims. The Clerk is directed to terminate the open motion (ECF No. 111).
SO ORDERED.
Dated:

W.~---

New York, New York
January~ ~20

AL VIN K. HELLERSTEIN
United States District Judge

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