Cassidian Communications, Inc. v. microDATA GIS, Inc.
Filing
201
MEMORANDUM AND OPINION. Signed by Judge Rodney Gilstrap on 08/08/2014. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
CASSIDIAN COMMUNICATIONS, INC.
Plaintiff,
v.
MICRODATA GIS, INC. MICRODATA,
LLC, and TELECOMMUNICATION
SYSTEM, INC.
Defendants.
§
§
§
§
§
§ Civil Action No. 2:12-cv-00162-JRG
§
§
§
§
§
§
MEMORANDUM AND OPINION
On December 20, 2013, after a five day jury trial, a jury in this patent infringement case
reached a verdict.
(See Dkt. No. 155.)
The jury found that (1) Plaintiff Cassidian
Communications, Inc. (“Cassidian”) had not proved by a preponderance of the evidence that
Defendants microDATA GIS, Inc. and microDATA, LLC (collectively, “microDATA”) directly
infringed United States Patent No. 6,744,858 (the “’858 Patent”); (2) Cassidian had not proved by
a preponderance of the evidence that microDATA and a second Defendant TeleCommunication
Systems, Inc. (“TCS”) (collectively, “Defendants”) indirectly infringed the ’858 Patent; and (3)
Defendants had proved by clear and convincing evidence that each of the asserted claims of the
’858 Patent was invalid. (See id.) Cassidian now seeks judgment as a matter of law to overturn
the jury’s finding of invalidity, or in the alternative, seeks a new trial as to validity. Cassidian also
seeks a new trial on the issue of infringement. (See Dkt. No. 184.) Having reviewed the parties’
written submissions, and for the reasons stated below, the Court GRANTS-IN-PART and
DENIES-IN-PART Cassidian’s motion for judgment as a matter of law as to invalidity, and
1
DENIES Cassidian’s motion for a new trial on the issue of validity or infringement.
I.
BACKGROUND
Plaintiff Cassidian Communications, Inc. (“Cassidian”) filed the above-styled action
against Defendants on March 26, 2012, alleging that Defendants infringed claims 1, 3-8 and 12-14
of the U.S. Patent No. 6,744,858 (the ‘858 Patent).
Specifically, Plaintiff identifies
microDATA’s X-Solution products and TCS’s Gemini system as the accused infringing products.
The ‘858 Patent was filed provisionally on January 26, 2001 and issued on June 1, 2004. It then
went through an Ex Parte Reexamination, and the Reexamination Certificate was issued on
December 2, 2008. Among the asserted claims, claims 1 and 3 are independent claims and the
remaining claims are dependent claims.
At the jury trial and after the close of the evidence, the Court granted Plaintiff Cassidian’s
Rule 50(a) motion for judgment as a matter of law that: (1) the asserted claims of the ’858 Patents
are not indefinite; (2) the asserted claims are not invalid for being obvious; and (3) no asserted
dependent claims are invalid for being anticipated. (Trial Tr. Dec. 19, 2013 PM at 96:18-22;
96:23-97:7; 99:15-18.) The Court also granted Defendants’ motion for judgment as a matter of
law that there is no direct infringement of dependent claims 4-5 and 12-14, which depend on
independent claim 3. (Id. at 111:15-22.)
II.
LEGAL STANDARD
A motion for judgment as a matter of law should be granted if there is no legally sufficient
evidentiary basis for a reasonable jury to find for a party. See Fed. R. Civ. P. 50. Upon a party’s
renewed motion for judgment as a matter of law following a jury verdict, the Court asks whether
“the state of proof is such that reasonable and impartial minds could reach the conclusion the jury
2
expressed in its verdict.” Fed. R. Civ. P. 50(b); Am. Home Assur. Co. v. United Space Alliance,
378 F.3d 482, 487 (5th Cir. 2004). A jury verdict must stand unless there is lack of substantial
evidence to support the jury’s factual findings, or the legal conclusions implied from the jury’s
verdict cannot, in law, be supported by those findings. Id. “Substantial evidence is defined as
evidence of such quality and weight that reasonable and fair-minded men in the exercise of
impartial judgment might reach different conclusions.” Threlkeld v. Total Petroleum, Inc., 211
F.3d 887, 891 (5th Cir. 2000). “[A] mere scintilla of evidence is insufficient to present a question
for the jury.” Id. In evaluating a motion for judgment as a matter of law, a court must “draw all
reasonable inferences in the light most favorable to the verdict and cannot substitute other
inferences that [the court] might regard as more reasonable.” E.E.O.C. v. Boh Bros. Const. Co.,
L.L.C., 731 F.3d 444, 451 (5th Cir. 2013) (citation omitted).
A motion for a new trial may be granted for “any reason for which a new trial has
heretofore been granted in an action at law in federal court.” Fed. R. Civ. P. 59(a)(1). “A new
trial may be granted…if the district court finds the verdict is against the weight of the evidence, the
damages awarded are excessive, the trial was unfair, or prejudicial error was committed in its
course.” Smith v. Transworld Drilling Co., 773 F.2d 610, 613 (5th Cir. 1985). A verdict can be
against the “great weight of the evidence”, and thus justify a new trial, even if there is substantial
evidence to support it. Shows v. Jamison Bedding, Inc., 671 F.2d 927, 930 (5th Cir. 1982). “The
trial court in passing on a motion for a new trial need not take the view of the evidence most
favorable to the verdict winner, but may weigh the evidence.” Id.; Laxton v. Gap Inc., 333 F.3d
572, 586 (5th Cir. 2003) (citing Shows, 671 F.2d at 930).
III.
ANALYSIS
3
A.
The Jury’s Finding of Invalidity
At the jury trial, Defendants presented three separate theories challenging the validity of
the asserted claims of the ’858 Patent: (1) improper inventorship; (2) anticipation; and (3) lack of
written description or enablement. The jury returned a general verdict finding all the asserted
claims invalid. (See Dkt. No. 155 at 4.) Cassidian now argues that there exists no legally
sufficient evidence by which a reasonable jury could have found any claim of the ’858 Patent
invalid. In essence, Cassidian seeks judgment as a matter of law that Defendants have failed to
prove the invalidity of the ’858 Patent under any of the three theories presented at trial. The Court
will address each of Defendants’ invalidity theories in turn.
a.
Inventorship
At the jury trial, Defendants challenged the validity of the ’858 Patent for improper
inventorship on the basis that Mr. William R. Whitehurst, whose name was not listed in the ’858
Patent, is an inventor of the claimed technology. Cassidian argues that, based on the evidence
presented at trial, no reasonable jury could have found that the ’858 Patent is invalid on
inventorship grounds.
The inventors named on an issued patent are presumed to be correct, so a party challenging
the validity of a patent based on nonjoinder of inventors must prove such with facts supported by
clear and convincing evidence. Univ. of Colorado Found., Inc. v. Am. Cyanamid Co., 342 F.3d
1298, 1308 (Fed. Cir. 2003). “Conception is the touchstone to determining inventorship.” Univ.
of Pittsburgh of Commonwealth Sys. of Higher Educ. v. Hedrick, 573 F.3d 1290, 1297 (Fed. Cir.
2009). To meet the clear and convincing evidentiary burden, the alleged co-inventors must prove
their contribution to the conception with “more than their own testimony concerning the relevant
4
facts.” Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1327 (Fed. Cir. 2004). That
is, the alleged inventor must prove his conception by corroborating evidence. Hedrick, 573 F.3d
at 1297. Whether the co-inventor’s testimony has been sufficiently corroborated is evaluated
under a “rule of reason analysis,” which requires that an “evaluation of all pertinent evidence must
be made so that a sound determination of the credibility of the inventor’s story may be reached.”
Linear Tech., 379 F.3d at 1327. Corroborating evidence may take many forms. Id. Reliable
evidence of corroboration preferably comes in the form of “records made contemporaneously with
the inventive process.” Id. Circumstantial evidence of an independent nature and oral testimony
from someone other than the alleged inventor may also corroborate. Id.
At trial, Mr. Whitehurst did not appear live, or by video deposition. Defendants read Mr.
Whitehurst’s deposition testimony from another case into the record. (Trial Tr. Dec. 18, 2013 PM
at 72:5-9.) In his deposition, Mr. Whitehurst testified that he came up with the idea of using a
voice-over-internet-protocol (“VoIP”) based system, instead of wired connections, to support
Public Safety Answering Points (“PSAP”). (Trial Tr. Dec. 19, 2013 AM at 13:5-11; 38:18-25
(Whitehurst).) Mr. Whitehurst further testified that the conception took place either in 1999 or in
early 2000, when he was an employee of Tel Control Inc. (“TCI”) – the original owner of the ’858
Patent. (Id. at 14:16-20.). Mr. Whitehurst joined TCI as an employee in 1997 and left on July
17, 2000, about six months prior to the filing of the ’858 provisional patent application. (Trial Tr.
Dec. 18, 2013 PM at 75:22-25 (Whitehurst); Trial Tr. Dec. 19, 2013 AM at 26:6-8 (Whitehurst);
PX003.)
According to Mr. Whitehurst, Mr. Terry Ryan and Mr. Randel Henry, the two
co-inventors of the ’858 Patent and also TCI employees, implemented the system that embodied
his idea. (Trial Tr. Dec. 19, 2013 AM at 28:2-7 (Whitehurst).)
5
Cassidian first challenges Mr. Whitehurst’s alleged inventorship on the basis that his
testimony was not sufficiently corroborated.
To corroborate Mr. Whitehurst’s testimony,
Defendants presented to the jury the title page of a white paper which had been attached to the
provisional application of the ’858 Patent. (PX003 at CSDN_A-00000926; Trial Tr. Dec. 18,
2013 PM at 79:13-80:10 (Whitehurst).)
The white paper was entitled “Carrier-Class
VoIP/PSAP,” and was authored by Mr. Whitehurst on June 8, 2000.
(PX003 at
CSDN_A-00000926.) Cassidian contends that the white paper does not constitute corroborating
evidence, because it was not made “contemporaneously with the inventive process.” See Linear
Tech., 379 F.3d at 1327. Mr. Whitehurst allegedly came up with the conception of the claimed
technology either in 1999 or in early 2000, and the white paper was dated June 8, 2000. However,
contemporaneous disclosure, though a preferred form of corroborating evidence, is not the only
form. See id. Here, a white paper authored by Mr. Whitehurst, the alleged co-inventor, which
was attached as a supporting document to the provisional application of the ’858 Patent, is clearly
pertinent to determining the credibility of Mr. Whitehurst’s story, even though the document
slightly post-dates the conception date. A reasonable jury could have considered the white paper
as corroborating evidence to Mr. Whitehurst’s alleged contribution to the conception of the ’858
Patent.
To further corroborate Mr. Whitehurst’s testimony, Defendants asked him to identify an
undated presentation, also attached to the ’858 Patent’s provisional application, which was entitled
“Computer Telephony Integration - 911 VoIP IPSAP by Tel Control Inc.” (the “CTI
Presentation”). 1 (See PX003 at CSDN_A-00000940; Trial Tr. Dec. 18, 2013 PM at 81:5-8
1
Though the CTI Presentation is undated, the parties seem to agree that it likely was created in early 2000, sometime
before Mr. Whitehurst left TCI in July 2000. (See Dkt. No. 184 at 15.)
6
(Whitehurst).) Mr. Whitehurst, along with Craig Dollar and Terry Ryan, were identified as
presenters. (See PX003 at CSDN_A-00000941.) Mr. Whitehurst acknowledged that Mr. Terry
Ryan, one of the co-inventors, and Mr. Craig Dollar, then his supervisor, both contributed partly to
the technical aspect of the presentation.
(Trial Tr. Dec. 18, 2013 PM at 81:25-83:15
(Whitehurst).) Other than that, however, Mr. Whitehurst stated that it was he who contributed the
rest of the presentation, including creating a diagram for IPSAP configuration which is similar to
one of the figures eventually embodied in the ’858 Patent.2 (Id. at 86:2-21; 91:1-5; PX003 at
CSDN_A-00000962.) Cassidian argues that Mr. Whitehurst’s testimony regarding the CTI
Presentation is contradictory, in that he testified that the IPSAP product described in the
presentation already existed at the time of his departure from TCI, while he later testified that Mr.
Ryan and Mr. Henry did not start building the IPSAP system until after his departure. (See Trial
Tr. Dec. 19, 2013 AM at 26:6-13, 28:8-20 (Whitehurst).) The Court notes first that it is not
entirely clear whether Mr. Whitehurst intended to say that the final IPSAP product had been
completed at the time of his departure. (See id. at 26:11-13 (“QUESTION: Okay. And at that
time, did whatever was contemplated as the IPSAP product exists as well? ANSWER; Yes. Yes.)
(emphasis added).) Mr. Whitehurst testified that, prior to his departure, he himself had set up
some test for “testing the concept” that eventually became the IPSAP product. (See id. at
28:11-29:6.) It is possible that he meant that the concept of the final IPSAP product, and not the
product itself, had existed at the time of his departure.
Furthermore, even assuming Mr.
Whitehurst had indeed contradicted himself regarding the timing when TCI started building the
IPSAP system, such does not substantially diminish the evidentiary value of the CTI Presentation.
2
While acknowledging the similarity between this diagram and one of the figures in the ’858 Patent, Mr. Henry, the
other co-inventor, testified that he did not know who had created the diagram. (Trial Tr. Dec. 17, 2013 PM at 13:2-11
(Henry).)
7
Regardless of whether TCI started building the IPSAP system before or after Mr. Whitehurst’s
departure, it remains true that Mr. Whitehurst was listed as one of three presenters of the CTI
Presentation, which itself was attached as a supporting document to the provisional application of
the ’858 Patent. Therefore, like the June 8, 2000 white paper – another supporting document to
the provisional application – the Court finds that the CTI Presentation is competent evidence that a
reasonable jury could have considered in determining Mr. Whitehurst’s alleged inventorship.
Finally, Defendants presented circumstantial evidence to corroborate Mr. Whitehurst’s
alleged inventorship. Mr. Robert Freinberg – CEO of Cassidian – testified that in a prior lawsuit
that Cassidian had filed against another company called Intrado for alleged infringement of the
’858 Patent, Intrado made a similar contention that Mr. Whitehurst was a co-inventor of the ’858
Patent. (Trial Tr. Dec. 16, 2013 AM at 123:12-22, 124:4-9, 126:6-9 (Freinberg).) Intrado
further claimed that it had obtained Mr. Whitehurst’s rights under the ’858 Patent. (Id. at
127:4-6.) Intrado and Cassidian eventually entered into a licensing agreement, under which
Intrado agreed to pay a lump sum of $12.5 million in exchange for a license to practice the ’858
Patent, and Cassidian agreed to pay $10.0 million to Intrado for “all rights and obligations that
Intrado may have gained or incurred” pursuant to a prior purchase agreement between Mr.
Whitehurst and Intrado. (Id. at 127:18-21, 128:18-19, 129:5-11.) At trial, Defendants suggested
to the jury that the ten million dollars that Cassidian had paid for whatever rights Intrado might
have gained from Mr. Whitehurst reflect Cassidian’s own belief that Mr. Whitehurst had at least
some rights to the ’858 Patent. (See, e.g., Trial Tr. Dec. 16, 2013 AM at 59: 17-25.) Cassidian
now contends that its payment under the Intrado license agreement cannot corroborate Mr.
Whitehurst’s testimony, because it is not evidence contemporaneous with the inventive process.
8
As noted above, contemporaneous evidence is not the only form of corroborating evidence. See
Linear Tech., 379 F.3d at 1327. The Court evaluates an alleged co-inventor’s testimony under a
“rule of reason analysis,” which requires an “evaluation of all pertinent evidence.” Linear Tech.,
379 F.3d at 1327. Here, that Cassidian, who denied any contribution from Mr. Whitehurst to the
claimed invention, itself paid a considerable sum for rights to the ’858 Patent that Intrado “may
have” obtained from Mr. Whitehurst, is pertinent circumstantial evidence to Mr. Whitehurst’s
alleged inventorship. A reasonable jury is entitled to taking such into consideration in judging
Mr. Whitehurst’s credibility.
In summary, the Court disagrees with Cassidian that Defendants have failed to provide
sufficient evidence to corroborate Mr. Whitehurst’s testimony. Aside from Mr. Whitehurst’s own
testimony, Defendants have shown the jury that Mr. Whitehurst was the sole author of a white
paper which was attached as supporting document to the provisional application of the ’858 Patent.
Mr. Whitehurst was listed as one of three presenters of a technical presentation – another
supporting document to the ’858 provisional application – which included a diagram resembling
one of the figures in the ’858 Patent. Mr. Whitehurst’s testimony that he had created the diagram
was un-contradicted. Finally, the jury heard evidence that Cassidian itself paid a considerable
sum in exchange for rights to the ’858 Patent that another entity allegedly had obtained from Mr.
Whitehurst. Viewing all the pertinent evidence collectively, the Court finds that substantial
evidence exists based on which a reasonable jury could have found that Mr. Whitehurst’s
testimony was sufficiently corroborated.
Cassidian next contends that Mr. Whitehurst had no idea whether the ’858 Patent’s claims
relate to his alleged conception. Cassidian bases its argument on Mr. Whitehurst’s testimony that
9
he did not know whether the claims of the ’858 Patent describe the ideas he had allegedly come up
with. (See Trial. Tr. Dec. 19, 2013 AM at 37:8-38:5 (Whitehurst).) Mr. Whitehurst, however,
also testified that he was not familiar with the concept of patent claims because he was not an
attorney, and that he did read through the “technical portion” of the ’858 Patent. (Id. at 36:9-21.)
Mr. Whitehurst then found that the ’858 Patent presented a VoIP-based PSAP system – the very
idea that he allegedly had come up with. (Id. at 39:2-11.) A reasonable jury could have found
that, despite Mr. Whitehurst’s unfamiliarity with formal patent claims, his understanding of the
“technical portion” of the ’858 Patent enabled him to decide whether the subject matter of the
patent related to his alleged conception.
Cassidian last argues that Mr. Whitehurst’s testimony should be discredited because it
contradicts that of Mr. Henry, Mr. Craig Dollar, and Mr. Robert Freinberg. All three of them
testified that Mr. Whitehurst made no contribution to the claimed invention. Despite such
contradiction, however, judgment as a matter of law in Cassidian’s favor is inappropriate here.
The jury heard testimony from Mr. Whitehurst, as well as from Mr. Henry, Mr. Dollar and Mr.
Freinberg. A reasonable jury could have weighed Mr. Whitehurst’s testimony and corroborating
evidence against the testimony from Mr. Henry, Mr. Dollar and Mr. Freinberg, and decided that it
believed and was persuaded by Mr. Whitehurst’s story. Under such circumstance, it is wholly
improper for the Court to replace the jury’s finding with Cassidian’s own assessment of Mr.
Whitehurst’s credibility. See E.E.O.C, 731 F.3d at 451. Such would squarely circumvent our
jury system.
To recap, substantial evidence exists in the record based on which a reasonable jury could
have found, under the clear and convincing evidence standard, that Mr. Whitehurst was a
10
co-inventor of the ’858 Patent, and that his contribution was omitted from the final issued patent.
Accordingly, the Court DENIES Cassidian’s motion for judgment as a matter of law that
Defendants have failed to prove improper inventorship of the ’858 Patent. The Court additionally
finds that a verdict of improper inventorship is not against “the great weight of the evidence,” and
accordingly DENIES Cassidian’s motion for a new trial on this basis.3 See Smith, 773 F.2d at
613.
b.
Anticipation
At trial, the jury was asked to decide whether independent claims 1 and 3 of the ’858 Patent
had been anticipated by three separate references proffered by Defendants: (1) U.S. Patent No.
6,697,858 (“Ezerzer”), filed on August 14, 2000; (2) U.S. Patent No. 6,587,545 (“Antonucci”),
filed on October 23, 2000 and claiming priority to a provisional application filed on March 4,
2000;
and
(3)
a
publication
titled
“Telecommunications
Security
Guidelines
for
Telecommunications Management Network” (the “TSG reference”). (See DX0013, DX0014,
DX 0018.)
i.
Ezerzer and Antonucci as prior art
Cassidian contends that there exists no legally sufficient evidence upon which a reasonable
jury could have found that Ezerzer and Antonucci qualify as prior art. This is because, although
the ’858 Patent application was provisionally filed on January 26, 2001, its date of invention was
in 1999, before the priority dates of both Ezerzer and Antonucci. 4
3
At trial, the jury was
“If a patentee demonstrates that inventorship can be corrected as provided for in section 256, a district court must
order correction of the patent, thus saving it from being rendered invalid.” Pannu v. Iolab Corp., 155 F.3d 1344,
1350 (Fed. Cir. 1998). In this case, however, Plaintiff Cassidian has never raised the issue of correcting inventorship
under Section 256.
4
It is undisputed that the priority dates for Antonucci and Ezerzer are March 4, 2000 and August 14, 2000
respectively.
11
specifically instructed on the law regarding the determination of the “date of invention” of the ’858
Patent. (Trial Tr. Dec. 20, 2013 AM at 46:14-48:9.) Initially, this Court must resolve whether a
reasonable jury could only have concluded that the ’858 Patent is entitled to a date of invention in
1999.
“Priority of invention goes to the first party to reduce an invention to practice unless the
other party can show that it was the first to conceive the invention and that it exercised reasonable
diligence in later reducing the invention to practice.” Taurus IP, LLC v. DaimlerChrysler Corp.,
726 F.3d 1306, 1322 (Fed. Cir. 2013) (citation omitted). Conception is the “formation in the
mind of the inventor, of a definite and permanent idea of the complete and operative invention, as
it is hereafter to be applied in practice.” Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1376 (Fed. Cir. 1986). The idea must be “so clearly defined in the inventor’s mind that
only ordinary skill would be necessary to reduce the invention to practice, without extensive
research or experimentation.” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996).
An inventor’s own testimony regarding the date he had the complete idea must be corroborated.
Singh v. Brake, 222 F.3d 1362, 1367 (Fed. Cir. 2000). In assessing corroboration of oral
testimony, courts apply a rule of reason analysis, under which “[a]n evaluation of all pertinent
evidence must be made so that a sound determination of the credibility of the inventor's story may
be reached.”
Id.
Reduction to practice follows conception.
Actual reduction to practice
requires that the claimed invention work for its intended purpose, while constructive reduction to
practice occurs when a patent application on the claimed invention is filed. Hybritech, 802 F.2d
at 1376. Finally, the evidence must show that the alleged earlier inventor was diligent “from a
date just prior to the other party’s conception to … [the date of] reduction to practice” by the
12
alleged earlier inventor. See Mahurkar, 79 F.3d at 1578.
At the jury trial, Mr. Henry, one of the co-inventors of the ’858 Patent, testified that he
conceived the idea of the claimed invention in 1999. (Trial Tr. Dec. 17, 2013 AM at 65:7-10
(Henry); Trial Tr. Dec. 17, 2013 PM at 3:24-4:9 (Henry).) Mr. Henry was asked to identify a
design document, created and last modified both in July 1999, which, according to him,
represented the implementation of one embodiment of the ’858 Patent. (Trial Tr. Dec. 17, 2013
AM at 67:19-68:9, 72:4-18, 75:15-23 (Henry); PX0323; PX0303.) He was also asked to identify
a second design document, dated March 31, 2000, which was a “later version” of the July 1999
document with enhancements. (Id.) Mr. Henry was further asked to identify a third design
document, titled “NT Server Design Requirements” and dated December 8, 1999. (Trial Tr. Dec.
17, 2013 AM at 74:25-75:5 (Henry); PX0305.) Mr. Henry explained that the “NT Sever” was an
operating name for the invention that eventually became the ’858 Patent. (Id.) A fourth design
document titled “Call Manager,” created on July 1, 1999 and last modified on March 31, 2000, was
also presented to the jury. (Trial Tr. Dec. 17, 2013 AM at 76:2-12 (Henry); PX0304.) In
addition, Mr. Henry identified a design diagram dated October 9, 1999,5 which was attached as a
supporting document to the provisional application of the ’858 Patent. (Trial Tr. Dec. 17, 2013
AM at 77:7-16 (Henry); PX003 at CSDN_A-00000967.) According to Mr. Henry, this design
diagram described the way active calls were tracked within TCI’s software system, and was on its
fifth revision in October 1999. (Id.)
During Mr. Henry’s cross-examination, Defendants challenged the relevancy of the four
design documents by pointing out that none of them had been included in the provisional patent
5
The design diagram has a revision date of August 9, 1999 on its face. (See PX003 at CSDN_A-00000967.)
13
application.6 (See Trial Tr. Dec. 17, 2013 AM at 86:4-87:6, 88:14-15, 89:15-90:12, 91:4-18,
92:4-9 (Henry); PX0303; PX0304; PX0305; PX0323.) Defendants further pointed out that the
earliest entry in Mr. Henry’s engineering notebook was on June 19, 2000, and that the notebook
lacked any specific detail regarding the claimed technology. (Trial Tr. Dec. 17, 2013 PM at
15:4-20:1 (Henry); PX0390.) However, Defendants did not dispute Mr. Henry’s testimony that
one of the design documents, created and last modified both in July 1999, represented the
implementation of one embodiment of the ’858 Patent. (See PX0323.) Nor did Defendant
dispute that another design document, titled “NT Server Design Requirements” and dated
December 8, 1999, included detailed design requirements for “NT Server” – an operating name for
the invention that eventually became the ’858 Patent. (See PX0305.) Finally, Defendant did not
challenge Mr. Henry’s testimony that the October 9, 1999 design diagram, which was attached to
the provisional application of the ’858 Patent, described the way active calls were routed within
TCI’s software system – the precise subject matter of the ’858 Patent.
(See PX003 at
CSDN_A-00000967.)
The Court finds that Mr. Henry’s testimony regarding the 1999 conception date of the ’858
Patent has been sufficiently corroborated by at least the two design documents last modified in
July 1999 and December 1999 respectively, and by the October 1999 design diagram. (See
PX0323, PX0305, PX003 at CSDN_A-00000967.) Defendants correctly noted that the two 1999
design documents had not been included in the provisional application. However, Mr. Henry’s
testimony regarding the subject of the two documents were not contradicted at trial, which
established that one document was an implementation of one embodiment of the ’858 Patent, and
the other set forth detailed design requirements for a server system that eventually became the ’858
6
Defendants also questioned the authorship of these documents for purposes of proving inventorship.
14
Patent. In addition, the October 9, 1999 design diagram, submitted as a supporting document to
the provisional application of the ’858 Patent, described the active call flow among various
components of TCI’s software system on which the ’858 Patent was based.
Mr. Henry’s
testimony that this was the fifth revision of the design was likewise un-contradicted at trial. This
design diagram, combined with the two 1999 design documents, substantially demonstrated that
the idea of the ’858 Patent had been “complete and operative” in 1999, and all that remained was
for the inventors to continue revising the design to its perfection. See Hybritech, 802 F.2d at
1376. Indeed, Mr. Henry’s testimony is consistent with that of Defendant’s own witness Mr.
Whitehurst, who also testified that the ’858 Patent was conceived either in 1999 or early 2000, well
before the filing date of the provisional application. (Trial Tr. Dec. 19, 2013 AM at 14:16-20
(Whitehurst).) Despite Defendant’s complaint that Mr. Henry’s engineering notebook lacked
specificity, the notebook is not the only evidence proffered by Plaintiff. Therefore, under the
“rule of reason” analysis, the evidence presented at trial substantially supported Mr. Henry’s
alleged conception date in 1999, and Defendants have failed to demonstrate otherwise. See
Singh, 222 F.3d at 1367. The Court finds that the only reasonable conclusion regarding the
conception date of the ’858 Patent was that it had been conceived in 1999.
Furthermore, Mr. Henry testified that between June 1998 until January 2001 when the
provisional application of the ’858 Patent was filed, he and his team at TCI continued developing
the claimed invention diligently. (Trial Tr. Dec. 17, 2013 AM at 76:23-77:6 (Henry).) Mr.
Henry’s testimony was corroborated by the different versions of design documents which had been
created in July 1999 and modified in March, 2000, and the group of design diagrams attached to
the provisional application of the ’858 Patent dated between July 8, 1999 and October 23, 2000.
15
(See PX0323; PX0303; PX003 at CSDN_A-00000879-924.)
Defendant provided no
contradicting evidence or testimony regarding Mr. Henry’s alleged efforts to continuously develop
the claimed invention since conception. Defendants merely pointed out that two other TCI
engineers then working with Mr. Henry could have corroborated Mr. Henry’s story. (See Trial
Tr. Dec. 17, 2013 PM at 5:12-6:13 (Henry).) However, testimony from co-workers is not the only
form of corroborating evidence. Mr. Henry’s testimony on diligence in reduction to practice was
corroborated by contemporaneous documentary evidence, and Defendants have failed to show
otherwise. Therefore, a reasonable jury could only have concluded that, the inventors of the ’858
Patent had been diligent in reducing the invention to practice, from a date before the priority dates
of Antonucci and Ezerzer, till the date the ’858 provisional application was filed. See Mahurkar,
79 F.3d at 1578.
In summary, viewing all the pertinent evidence in the record, the Court is persuaded that a
reasonable jury could only have concluded: (1) the ’858 Patent had been conceived in 1999; and
(2) the inventors of the ’858 Patent had worked diligently in reducing the invention to practice.
Therefore, a reasonable jury could only have found that the ’858 Patent is entitled to a date of
invention in 1999, predating both Ezerzer and Antonucci. Accordingly, neither Ezerzer nor
Antonucci qualifies as prior art to the ’858 Patent. See Taurus, 726 F.3d at 1323 (holding that a
patent is removed as a prior art reference, when an alleged earlier inventor demonstrates
conception before the filing date of the reference patent and diligent reduction to practice after that
date). The Court GRANTS Cassidian’s motion for judgment as a matter of law that Defendants
have failed to prove by clear and convincing evidence that claims 1 and 3 of the ’858 Patent are
16
anticipated by Ezerzer or Antonucci.7
ii.
Anticipation by the TSG reference
Cassidian next argues that Defendants have failed to prove that the TSG reference
anticipates claims 1 and 3 of the ’858 Patent. The parties do not dispute that TSG, dated October
1995, qualifies as prior art to the ’858 Patent. As such, the Court focuses on whether substantial
evidence supports a finding that, under the “clear and convincing evidence” standard, the TSG
reference discloses each and every element of claims 1 and 3 of the ’858 Patent.
See
Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001).
Claim 1 of the ’858 Patent recites:
1. An emergency services communication system, comprising:
a plurality of remote terminals for enabling emergency services operators
to receive incoming calls and to dispatch emergency service personnel in response
to said incoming calls said terminals each associated with one of a plurality of call
centers;
a wide area network interfaced with each of the plurality of remote
terminals;
a central data manager configured to receive said incoming calls and to
route said incoming calls to said plurality of remote terminals over said wide area
7
At trial, the jury was not specifically instructed under 35 U.S.C. 102(e), i.e., that “an invention is not new if it was
described in a published patent application filed by another in the United States” before the date of invention. Neither
party objected to this omission at trial. Cassidian now argues that, because of such, the critical dates for Ezerzer and
Antonucci should be the dates Ezerzer and Antonucci became “publically known or described in a printed
publication,” which are later than their respective filing dates. (See Dkt. No. 184 at 19-20.) Defendants, on the other
hand, urge this Court to use Ezerzer and Antonucci’s filing dates as the critical dates. The Court finds it unnecessary
to resolve such dispute. As discussed above, the Court finds that a reasonable jury could only conclude that the ’858
Patent is entitled to a date of invention in 1999, predating the earliest filing dates of both Ezerzer and Antonucci.
Therefore, Ezerzer and Antonucci do not qualify as prior art under either Plaintiff or Defendants’ theory.
17
network, said central data manager comprising a server having a database that is
partitioned such that a first partitioned portion contains first data associated with a
particular one of said call centers, so as to maintain privacy of the first data, the
partitioned database being configured to serve the plurality of call centers;
wherein each of said incoming calls is associated with Automated
Number Information and Automatic Location Information data identifying a
communication device from which said incoming call originated and wherein each
of said incoming calls is delivered over said Wide Area Network to a particular one
of said remote terminals by said central data manager based on said associated
Automatic Number Information of said incoming call and wherein said central data
manager is located in a centralized secure facility with on-site server capability for
analyzing and recording said Automatic Number information and said Automatic
Location Information for each of said incoming calls; and
wherein said centralized secure facility serves a plurality of Public Safety
Answering Points, each of which comprise multiple individual members of said
plurality of remote terminals.
(’898 Patent Ex Parte Reexamination Certificate, 1:25-60 (emphasis added).)
At trial, Defendants’ expert Dr. Konchitsky opined that the TSG reference anticipated
claim 1 of the ’858 Patent. (Trial Tr. Dec. 19, 2013 AM at 127:3-5 (Konchitsky).) The
following consists of Dr. Konchitsky’s entire testimony regarding the first two elements of claim
1, i.e., “an emergency services communication system” and “a plurality of remote terminals”:
Q. (By Mr. Edward Pennington) Does TSG describe an emergency services
18
communication system?
A. Yes.
Q. Does it describe a system that includes a plurality of remote terminals?
A. Yes.
(Id. at 127:10-15.)
Dr. Konchitsky’s testimony regarding whether TSG discloses the first two elements of
claim 1 is entirely conclusory, lacking any of the specificity required by the “clear and convincing
evidence” standard. Therefore, the Court finds that no reasonable jury, based on these naked
conclusions, could have found that TSG discloses the first two elements of claim 1.
With respect to the claim element “a wide area network interfaced with each of the
plurality of remote terminals,” Dr. Konchitsky testified that the following text on page 10 of the
TSG reference discloses a “wide area network”:
The PSN is becoming increasingly controlled and dependent on software and
operations networks that may offer customer access to network functions,
user-configured database, and special features.
(Id.at 7-15; DX0018 at 10 (emphasis added).)
Dr. Konchitsky failed to explain why a generic description of “network functions”
constitutes a disclosure of a specific type of network, i.e., “wide area network” as recited in claim
1. Dr. Konchitsky also failed to identify how the paragraph above discloses a wide area network
that is “interfaced with each of the plurality of remote terminals,” as required by claim 1.
Therefore, the Court finds that no reasonable jury could have found that TSG discloses a “wide
area network interfaced with each of the plurality of remote terminals” based on Dr. Konchitsky’s
testimony.
19
Dr. Konchitsky’s testimony regarding the remaining elements of claim 1 is similarly
imprecise and conclusory. For example, with respect to the requirement that “each of said
incoming calls is associated with Automated Number Information and Automatic Location
Information data,” Dr. Konchitsky testified that he could not remember where in the TSG
reference this claim element was disclosed. (Id. at 129:21-130:2.) Nonetheless, he opined that
this limitation was found in the TSG reference, because he “did remember” that he had an opinion
of such. (Id. at 130:3-7.)
The Court need not list exhaustively Dr. Konchitsky’s testimony regarding the TSG
reference. It suffices to say that, as noted in the examples above, such testimony is mostly vague,
conclusory and lacks specificity. (See id. at 126:15-131:7.) The Court is persuaded that no
reasonable jury could have found that the TSG reference disclosed each and every element of
claim 1 based on Dr. Konchitsky’s testimony.
See Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 294 (Fed.Cir.1985) (“Lack of factual support for expert opinion
going to factual determinations, however, may render the testimony of little probative value in a
validity determination.”). Given that such testimony is the only basis supporting Defendants’
argument that TSG anticipates claim 1 of the ’858 Patent, no reasonable jury could have sided with
Defendants on this issue. Accordingly, the Court GRANTS Cassidian’s motion for judgment as
a matter of law that Defendants have failed to prove by clear and convincing evidence that the TSG
reference anticipates claim 1 of the ’858 Patent.
As to claim 3 of the ’858 Patent, Dr. Konchitsky did not provide an element-by-element
analysis, and instead testified as follows:
Q. (By Mr. Edward Pennington) Do you have an opinion as to whether or not TSG
20
would invalidate Claim 3?
A. Yes, it did.
Q. And would it be for the same disclosures that were referred to with respect to
Claim 1?
A. Yes.
(Id. at 131:13-19.)
Therefore, Dr. Konchitsky’s opinion as to whether TSG anticipates claim 3 is based on
“the same disclosures that were referred to with respect to Claim 1.” Having decided that no
reasonable jury could have found that TSG disclosed each and every element of claim 1, the Court
necessarily finds the same with claim 3.
Accordingly, the Court additionally GRANTS
Cassidian’s motion for judgment as a matter of law that Defendants have failed to prove by clear
and convincing evidence that the TSG reference anticipates claim 3 of the ’858 Patent.
c.
Written Description and Enablement
Cassidian next argues that Defendants have failed to present evidence sufficient for a
reasonable jury to find the ’858 Patent invalid because of lack of written description or
enablement. At trial, the jury was instructed to determine whether Defendants had proved by
clear and convincing evidence that each asserted claim of the ’858 Patent was invalid for lack of
written description or for failing the enablement requirement. (Trial Tr. Dec. 20, 2013 AM at
48:21-52:15.)
A patent specification must contain an adequate written description. 35 U.S.C. § 112;
Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003). “The test for
compliance with § 112 has always required sufficient information in the original disclosure to
21
show that the inventor possessed the invention at the time of the original filing.” Moba, 325 F.3d
at 1320. “The possession test requires assessment from the viewpoint of one of skill in the art.”
Id.
In addition, to satisfy Section 112, the patent specification must “enable a person of
ordinary skill in the art to make and use the invention.” 35 U.S.C. § 112; Cephalon, Inc. v.
Watson Pharm., Inc., 707 F.3d 1330, 1336 (Fed. Cir. 2013). This requirement is met when at the
time of filing the patent application, one skilled in the art, having read the specification, could
practice the invention without “undue experimentation.” Cephalon, 707 F.3d at 1336. The
following factors may be considered when determining if a disclosure requires undue
experimentation: (1) the quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4) the nature of the
invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability
or unpredictability of the art, and (8) the breadth of the claims. Id. “These factors while
illustrative are not mandatory.” Id. Although experimentation must not be undue, “a reasonable
amount of routine experimentation required to practice a claimed invention does not violate the
enablement requirement.” Id. Finally, a patent is presumed enabled. Id. at 1337. The burden
to prove lack of enablement by clear and convincing evidence is Defendants’ alone. Id.
At trial, Defendants’ expert Dr. Konchitsky testified that the ’858 Patent did not include
sufficient description for a “partitioned database” – an element required by all asserted claims.
Dr. Konchitsky further testified that the patent specification did not teach one of ordinary skill in
the art how to make a “partitioned database.” Below is the entire testimony from Dr. Konchitsky
regarding both written description and enablement:
22
Q. Did the patent describe how to make a partitioned database?
A. No.
Q. So a lot of the testimony that we’ve heard in Court about extremely minute detail
about how databases are built, none of that was in the patent, was it?
A. That’s correct, it was not in the patent.
Q. And the only description found in the patent was just a couple of words that said
the words “partitioned database,” right?
A. Yes. I can point in the patent where it is, that’s correct.
MR. EDWARD PENNINGTON: Could you pull up the patent, please? I believe
it’s PX 1. And it’s -THE WITNESS: If you go further into the – I think the third page of the patent,
yeah.
A. So that’s the place that discussed a partition. It’s on Page 6.
Q. (By Mr. Edward Pennington) Is that the full extent of the description of how
databases might be partitioned?
A. Yes.
Q. And you’ve written software for partitioned databases or at least SQL databases,
or any kind of databases, right?
A. Yes.
Q. Okay. And would this be able to teach one of ordinary skill in the art how to
make a specific kind of database?
A. No.
23
(Trial Tr. Dec. 19, 2013 AM at 51:19-52:23 (Konchitsky).)
Dr. Konchitsky’s testimony consists of a series of “yes” and “no” answers to counsel’s
leading questions, without providing any specific reason for giving such answers. While Dr.
Konchitsky did identify a page from the ’858 Patent specification upon which he purportedly
formed his opinion, he never explained how such evidence demonstrated that, to build a
partitioned database, one skilled in the art would have to go through “undue experimentation.”
See Cephalon, 707 F.3d at 1336. Dr. Konchitsky’s ipse dixit statements that the ’858 Patent failed
the written description and enablement requirements cannot be sufficient to constitute clear and
convincing evidence. See id. at 1338. Given that Dr. Konchitsky’s testimony is the only basis
upon which Defendants attempted to invalidate the ’858 Patent under Section 112, the Court finds
that no reasonable jury could have concluded that the ’858 Patent was invalid for lack of written
description or for failing the enablement requirement. 8
Accordingly, the Court GRANTS
Cassidian’s motion for judgment as a matter of law that Defendants have failed to prove by clear
and convincing evidence that the ’858 Patent was invalid under Section 112.
In summary, the Court has denied Cassidian’s motion for judgment as a matter of law that
Defendants failed to prove improper inventorship, and also denied its motion for a new trial on this
basis. The Court has granted Cassidian’s motion for judgment as a matter of law with respect to
all other grounds of invalidity. Given that a finding of improper inventorship alone would have
been sufficient to invalidate all asserted claims of the ’858 Patent, the jury’s invalidity verdict must
stand. See i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (holding that an
appellate court would uphold a general verdict “if there was sufficient evidence to support any of
8
In opposition to Cassidian’s motion for judgment as a matter of law under Section 112, Defendants cited to portions
of the reexamination history of the ’858 Patent. (See Dkt. No. 195 at 37 n.133.) Such evidence, however, has never
been presented to the jury at trial, and must be disregarded by the Court in this analysis.
24
the [party’s] alternative factual theories.”).
B.
The Jury’s Finding of Non-infringement
The jury found that microDATA had not directly infringed claims 1, 6-8 of the ’858 Patent
and had not indirectly infringed claims 1, 3-8 and 12-14. (See Dkt. No. 155 at 1-2.) The jury
also found that TCS had not indirectly infringed claims 3-5, 12-14 of the ’858 Patent. (See id. at
2.) Cassidian now argues that the jury’s non-infringement verdict contradicts the “great weight of
the evidence,” and thus a new trial should be granted. See Smith, 773 F.2d at 613.
Cassidian’s attack on the jury’s non-infringement verdict focuses on three disputed claim
limitations: (1) a “partitioned database,” as required by all asserted claims of the ’858 Patent ; (2)
“each of said incoming calls is associated with Automated Number Information and Automatic
Location Information data,” as required by claim 1; and (3) a “wide area network” as required by
claim 1. The Court will address each of these disputed elements in turn.
a.
Partitioned Database
Both independent claims 1 and 3 require “a database that is partitioned” or a “partitioned
database.” (See ’858 Patent, Ex Parte Reexamination Certificate, 1:39; 2:34.) The Court
previously construed this claim term in Plant Equip., Inc. v. Intrado, Inc., Civil Action No.
2:09-cv-0395-JRG (April 27, 2012). The parties have agreed to adopt the same construction in
this case. The Court construed “partitioned database” as follows:
an organization of call center data in computer data storage together with database
management software running on the server, wherein the call center data is
organized and made accessible such that the data of an individual call center is
accessed without accessing the data of any other call center sharing the server.
(Memorandum Opinion and Order at 13, Plant Equip., Inc. v. Intrado, Inc., No.
2:09-cv-0395-JRG (E.D. Tex. Apr. 27, 2012), ECF No. 127.)
25
i.
microDATA’s databases
Cassidian first argues that the great weight of the evidence confirms that Defendant
microDATA’s databases are partitioned.
At trial, Cassidian’s expert Dr. Williams testified that microDATA’s databases were
partitioned as defined in the Court’s claim construction. Dr. Williams based his opinion on a
review of “documentation and [microDATA’s] software, the testimony of the engineer from
microDATA,” as well as a design schema which showed how databases were organized in
microDATA’s X-Solution products. (Trial Tr. Dec. 16, 2013 PM at 72:17-73:6 (Williams);
PX0350.) Dr. Williams explained that microDATA’s databases are organized into tables, and the
relationship between those tables is determined by “primary keys.” (Id. at 73:7-16.) According
to Dr. Williams, a primary key is the link to a certain set of data within the database, each primary
key permitting its user to access only the corresponding set of data while restricting the user’s
access to other data within the database.
(Id. at 74:4-5; 75:22-25.)
Each Public Safety
Answering Point (“PSAP”) call center which uses microDATA’s software is associated with a
globally unique identifier (“GUID”). (Id. at 73:17-25.) Dr. Williams explained that the PSAP
GUID is a type of primary key, which allows a particular PSAP to access its own data within
microDATA’s databases while restricting its access to data of other PSAPs. (Id. at 73:19-25;
75:16-18; 122:15-25; 124:4-9.) Dr. Williams further testified that on some occasions a user may
be given access to data of more than one PSAP. (Id. at 85:11-19.) This, however, “doesn’t
negate the ability of the database to isolate information from various users.” (Id.)
Cassidian additionally provided testimony from Mr. Kevin Haynie, former employee of
microDATA. Mr. Haynie started at microDATA between 2005 and 2006, and left in March
26
2011, about a year before Cassidian filed this case. (Trial Tr. Dec. 17, 2013 PM at 51:17-52:3
(Haynie).) At the time of his departure, Mr. Haynie was microDATA’s Director of Development.
(Id. at 52:4-8.) During his time at microDATA, Mr. Haynie wrote software for xSwitch – one of
microDATA’s X-Solution products – and for libraries of microDATA’s databases. (Id. at 63:1-8;
id. at 41:1-6 (Heinrich).)
Mr. Haynie testified that microDATA’s system uses “SQL
authentication” to ensure that an authorized user may only access their own information within the
database. (Id. at 60:6-61:5 (Haynie).) Mr. Haynie further testified that an administrator of
microDATA’s system may control different PSAPs to access different sets of information, though
this is done at the “application level,” and not through SQL authentication. (Id. at 61:22-62:6.)
Defendants’ expert Dr. Konchitsky and Defendant TCS’s witness Mr. Victor Burton both
agreed that a primary key can be used to restrict access to only a certain set of data within a
database. (Trial Tr. Dec. 19, 2013 AM at 81:15-18 (Konchitsky); Trial Tr. Dec. 18, 2013 PM at
57:11-15 (Burton).) Dr. Konchitsky, however, testified that such a setting is undesirable in the
PSAP context, because PSAPs needed to be able to share data among one another in emergency
situations. (Trial Tr. Dec. 19, 2013 AM at 48:17-24; 50:11-24; 81:19-21 (Konchitsky).) Dr.
Konchitsky further testified that microDATA has implemented its software system such that all
PSAPs are allowed to share a single database. (Id. at 48:17-18.) He based his opinion on a
microDATA document about its X-Solution products, which stated that a “common challenge
faced by today’s PSAPs” was to share call information seamlessly among various PSAPs. (Id. at
77:3-22; PX0332 at MDINC0003527.) According to Dr. Konchitsky, allowing various PSAPs to
share call information such as a caller’s name, phone number and address is a standard industry
27
practice.9 (Trial Tr. Dec. 19, 2013 AM at 77:23-78:7 (Konchitsky).)
Further, Mr. Bruce
Jason Heinrich, Present of microDATA, testified that within microDATA’s system, there is “no
way” that one particular PSAP is granted access only to a portion of the data because microDATA
keeps “all of the data in one place for all of the PSAPs.” (Trial Tr. Dec. 18, 2013 AM at
101:7-102:2 (Heinrich).) Mr. Heinrich explained that microDATA did so to make all the data
available to all the PSAPs for purposes of sharing information among various PSAPs, and to
“move agents from PSAP to PSAP to log in and see that data.” (Id. at 102:2-5.)
To recap the pertinent evidence, both sides agree that a primary key, such as the PSAP
GUID in microDATA’s system, can be used to restrict access to only a certain set of data within
the database.
The parties diverge, however, as to whether microDATA’s software system
implements the PSAP GUID such that “the data of an individual call center is accessed without
accessing the data of any other call center sharing the server.” Plaintiff’s expert Dr. Williams
opined that the PSAP GUID allowed a particular PSAP to access data associated only with that
PSAP, and restricted it from gaining access to data associated with other PSAPs. (Trial Tr. Dec.
16, 2013 PM at 73:17-25 (Williams).) Defendants’ expert and witness, however, testified that no
such restriction was placed on PSAPs, because in emergency situations all data needs to be made
available to all PSAPs, to facilitate “mov[ing] agents from PSAP to PSAP.” (Trial Tr. Dec. 19,
2013 AM at 48:17-18 (Konchitsky); Trial Tr. Dec. 18, 2013 AM at 102:2-5 (Heinrich).) Indeed,
Dr. Williams did not deny that a user associated with one PSAP may have access to data associated
9
Cassidian argues that caller ID, address and phone number are not “data of an individual call center” as stated in the
Court’s claim construction. Cassidian thus contends that various PSAPs’ ability to share such information is
irrelevant to the inquiry of whether or not microDATA’s databases are partitioned. The Court disagrees. As an
initial matter, Cassdian never distinguished between “data about callers” and “data about an individual call center” at
trial. Further, the jury was presented with testimony that, in an Enhanced 9-1-1 system, geographically separated
PSAPs each are associated with a particular database that includes a set of names, addresses and phone numbers.
(Trial Tr. Dec. 19, 2013 AM at 60:9-15 (Konchitsky).) Such testimony demonstrated that “data about callers” is at
least part of the “data about an individual call center.”
28
with multiple PSAPs. (Trial Tr. Dec. 16, 2013 PM at 85:11-19 (Williams).) Weighing all the
pertinent evidence, the Court finds that, while PSAP GUID may be used to restrict a particular
PSAP’s ability to access data associated with other PSAPs, a reasonable jury could have concluded
that microDATA did not implement PSAP GUID to achieve this specific result. A jury could
have reasonably found that microDATA used PSAP GUID as the “link” to a set of data associated
with a particular PSAP, without restricting other PSAPs from accessing the same set of data.
Based on the testimony of Dr. Konchitsky and Mr. Heinrich, the jury could have found that all
PSAPs in microDATA’s system share a single database, where each PSAP has access to all the
data within the database, such data including at least caller IDs, phone numbers and addresses.
Therefore, a reasonable jury could have found that, under the Court’s claim construction,
microDATA’s databases are not “partitioned,” and accordingly such a finding is not “against the
great weight of the evidence.”
ii.
TCS’s databases
Cassidian next argues that the great weight of the evidence confirms that Defendant TCS’s
databases are partitioned.
At trial, Cassidian’s expert Dr. Williams testified that TCS’s system contained the “same
type of technique of isolating users and PSAP centers” as microDATA’s system. (Trial Tr. Dec.
16, 2013 PM at 137:11-20 (Williams).) Dr. Williams explained that TCS’s Gemini system – the
accused infringing system – also used a primary key structure called “Responder” to identify a
particular PSAP, which assigned a PSAP ID to each PSAP as the primary key. (Id. at 138:5-25,
139:2-140:7; PX0016 at TCS0007547; PX0014.) As with microDATA’s system, Dr. Williams
testified that TCS’s Gemini system restricted access to data based on PSAP IDs. (Trial Tr. Dec.
29
16, 2013 PM at 140:10-12 (Williams).) According to Dr. Williams, the Gemini system used
“responder numbers” to isolate information of one responder from another, with each “responder
number” being linked to a particular set of “Internet addresses, URLs – about the initial call
location, the alternative route location, and a transfer location for the call.” (Id. at 141:8-142:12;
PX0015.) Finally, Dr. Williams testified that TCS’s system allowed a system administrator to
create, delete and maintain user accounts, as well as to authenticate users and grant those users
access to different web-based applications and reports.
(Id. at 143:2-13; PX0345 at
TCS0237156.) Authorized personnel would be able to view all data or only a subset of data
depending on “that individual’s role.” (Id. at 143:14-24; PX0018 at TCS00616632.)
On the other hand, TCS’s witness Mr. Burton testified that PSAPs in the Gemini system
“are not allowed to access data in the Gemini database.” (Trial Tr. Dec. 18, 2013 PM at 31:16-25
(Burton).)
Instead, the PSAPS can only query for information relating to a call, such as the call
location. (Id. at 31:20-4.) Mr. Burton further testified that information of all PSAPs is stored in
Gemini’s database, which is not configured to keep the data of one PSAP from that of another.
(Id. at 33:15-17.) According to Mr. Burton, TCS used the primary key for the purpose of
enhancing database retrieval time. (Id. at 54:13-24.)
Viewing all the pertinent evidence, the Court finds that Cassidian’s allegation that TCS’s
databases are partitioned suffers the same flaw as that with microDATA’s databases. Cassidian
demonstrated that TCS’s system employed a “primary key” to uniquely identify a PSAP, and that
it is possible to use such primary key to restrict a particular PSAP from accessing data associated
with other PSAPs. However, the evidence falls short of proving that TCS implemented the
primary key to achieve this specific result. Indeed, Dr. Burton testified that the Gemini system
30
used the primary key to enhance database retrieval time, and not, as Cassidian alleges, to restrict a
PSAP’s ability to access data associated with another PSAP. (Trial Tr. Dec. 18, 2013 PM at
54:13-24 (Burton).) Such testimony was not contradicted at trial. Mr. Burton further testified
that all PSAPs in the Gemini System share a single database, which is not configured to keep the
data of one PSAP from that of another. (Id. at 33:15-17.) While Dr. Williams disagreed with
Mr. Burton, the disagreement alone is insufficient to demonstrate that a finding consistent with Mr.
Burton’s testimony is “against the great weight of the evidence.” Finally, Cassidian contends that
TCS’s user access control/authentication feature proves that its databases are “partitioned.” (See
Dkt. No. 184 at 47.) However, the testimony Cassidian solicited at trial failed to specify how
such feature enables “the data of an individual call center to be accessed without accessing the data
of any other call center sharing the server.” (See Trial Tr. Dec. 18, 2013 PM at 64:17-24,
52:8-54:7 (Burton); Trial Tr. Dec. 17, 2013 PM at 74:25-75:7 (Burton).) Therefore, the Court
finds that a reasonable jury could have concluded that TCS did not use the primary key to restrict a
particular PSAP from accessing data associated with other PSAPs.
A finding that TCS’s
databases are not “partitioned” is not “against the great weight of the evidence.”
b.
ANI and ALI or Equivalents
Claim 1 of the ’858 Patent requires that, within the “emergency services communication
system,”
each of said incoming calls is associated with Automated Number Information and
Automatic Location Information data identifying a communication device from
which said incoming call originated and wherein each of said incoming calls is
delivered over said Wide Area Network to a particular one of said remote terminals
by said central data manager based on said associated Automatic Number
Information of said incoming call and wherein said central data manager is located
in a centralized secure facility with on-site server capability for analyzing and
recording said Automatic Number Information and said Automatic Location
31
Information for each said incoming calls.
(’898 Patent Ex Parte Reexamination Certificate, 1:44-56 (emphasis added).)
The
Court
previously
adopted
the
parties’
agreed
claim
construction
for
“Automatic/Automated Number Information” as “the telephone number of the telephone used by
the calling party.” (See Dkt. No. 71 at 6.) The Court further construed “Automatic Location
Information” as “information about the calling party which includes the name, address and other
information related to the location of the calling party (e.g., agencies that serve that address, such
as police, fire department, and ambulance).” (See id. at 11.) The Court construed “each of” to be
given its plain and ordinary meaning. (See id. at 12.)
It is undisputed that microDATA’s accused system received three types of calls: wireline
calls or calls delivered via landlines; wireless calls; and Voice-over-Internet Protocol (“VoIP”)
calls.
(See Trial Tr. Dec. 16, 2013 PM at 49:16-50:6 (Williams).) Cassidian argues that
microDATA infringed the above element of claim 1, because all three types of incoming calls are
associated with Automatic/Automated Number Information (“ANI”) or an equivalent thereof, and
Automatic Location Information (“ALI”) or an equivalent thereof. Defendant microDATA, on
the other hand, avers that only wireline calls are associated with actual ANI and ALI, while
wireless and VoIP calls are not associated with either ANI or ALI or the equivalents thereof. At
trial, the jury was instructed on the law of literal infringement as well as infringement under the
doctrine of equivalents. (Trial Tr. Dec. 20, 2013 AM at 30:23-34:8.)
Under the doctrine of equivalents, the infringement analysis should focus on “the role
played by each element in the context of the specific patent claim,” which informs the inquiry as to
“whether a substitute element matches the function, way and result of the claimed element, or
32
whether the substitute element plays a role substantially different from the claimed element.”
Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997). Equivalency
should be evaluated at the time of infringement, from the perspective of a person having ordinary
skill in the art. See id. at 37.
Here, both sides agree that a wireline call is associated with ANI and ALI as recited in
claim 1, which information is used to identify and route the wireline call to an appropriate PSAP.
(See ’898 Patent Ex Parte Reexamination Certificate, 1:44-56.) Cassidian’s expert Dr. Williams
testified at trial that, for a wireline call, ANI is the telephone number of a phone, e.g., in someone’s
house, which may be used to identify a specific caller; and ALI is the street address where the
phone is located. (See Trial Tr. Dec. 16, 2013 PM at 50:19-24; 88:3-8 (Williams).) The parties
also appeared to agree that neither wireless nor VoIP calls are literally associated with ANI or ALI.
(See id. at 88:9-12; 90:14-91:2.) In essence, the parties’ dispute focuses on whether or not
wireless and VoIP calls are associated with the equivalents of ANI and ALI.
Dr. Williams testified that each wireless call is associated with an equivalent of ANI and
ALI, which is “a particular number” called “Emergency Services Routing Key” (“ESRK”). (See
id. at 88:9-89:10; Trial Tr. Dec. 17, 2013 AM at 58:2-4 (Williams).) Dr. Williams explained that
ESRK is a number generated by the mobile carrier and relates – through the mobile carrier’s
database – to a particular cell phone and a particular transaction on that cell phone. (Trial Tr. Dec.
17, 2013 AM at 58:5-11 (Williams).) According to Dr. Williams, ESRK is used to determine the
identity of the caller and to associate that incoming call with a particular device or terminal, much
like ANI being used to identify a specific phone or caller. (See Trial Tr. Dec. 16, 2013 PM at
89:15-21 (Williams).)
Dr. Williams further testified that ESRK also conveys location
33
information associated with a wireless call, information such as cell tower number or a GPS
location in the form of longitudes and latitudes. (Id. at 898:14-22.) Dr. Williams opined that
information about the identity and location of the caller, as conveyed by ESRK, is used by an
emergency call system such as microDATA’s accused system to route the wireless call to an
appropriate PSAP. (Id. at 90:1-4.) Thus, ESRK achieves substantially the same “function, way
and result” with wireless calls as ANI and ALI with wireline calls. (Id. at 90:5-8; Trial Tr. Dec.
17, 2013 AM at 57:24-58:4 (Williams).) As to VoIP calls, Dr. Williams testified that each VoIP
call is also associated with a unique number called “Emergency Services Query Key” (“ESQK”),
for purposes of identifying the caller and determining the location of the incoming call. (Trial Tr.
Dec. 16, 2013 PM at 90:14-22 (Williams).) The accused system then uses the caller identity and
location to route that VoIP call to the appropriate PSAP. (Id.) Dr. Williams thus opined that the
use of ESQK with VoIP calls achieves substantially the same “function, way and result” as ANI
and ALI with wireline calls. (Id. at 90:23-91:8.) Finally, Dr. Williams presented the result of his
study of microDATA’s source code, which uses a common set of logic and codes to route all three
types of calls, regardless of whether a call is associated with ANI/ALI, ESRK or ESQK. (Id. at
91:14-92:11.)
Plaintiff’s witness Mr. Kevin Haynie – former employee of microDATA – further testified
that, to determine the location of an incoming call, microDATA’s system performs a “lookup” into
its database, based on different types of information for different types of calls. (See Trial Tr.
Dec. 17, 2013 PM at 58:3-59:2 (Haynie).) ANI is used to look up the location associated with a
wireline call. (See id. at 58:8-11.) A “pseudo-ANI” or “pANI,” provided by the wireless carrier
to uniquely identify a wireless caller, is used to obtain location information associated with the
34
wireless caller. (Id. at 58:21-59:3.) Finally, to look up location information of a VoIP call, Mr.
Haynie testified that the accused system would have to rely on IP addresses. (Id. at 58:11-12.)
Like Dr. Williams and Mr. Haynie, Defendant TCS’s witness Mr. Burton also testified that
the accused system uses ANI and ALI to identify and route wireline calls to the appropriate
PSAP.10 (See Trial Tr. Dec. 18, 2013 PM at 25:5-26:7 (Burton).) Mr. Burton also agreed with
Dr. Williams that ESRK and ESQK may respectively be used to identify and route wireless and
VoIP calls to the appropriate PSAP, in the same way ANI and ALI are used for purposes of
identifying and routing wireline calls. (Id. at 42:15-23; 43:20-44:13.) Mr. Burton agreed with
Mr. Haynie that a “pseudo-ANI” is used to obtain location information associated with a wireless
caller, 11 and agreed with Dr. Williams that ESQK is used to obtain identity and location
information associated with a VoIP caller. (Id. at 26:10-27:1; 28:8-20.) However, Mr. Burton
denied that pseudo-ANI or ESQK has the same function as ANI, because, unlike ANI which is
basically an existing telephone number, a pseudo-ANI or ESQK is not a dialable number. (Id. at
27:6-13; 29:6-10.) Nevertheless, Mr. Burton admitted that, after a wireless or VoIP caller places
a call, there exists a call back number associated with that call for at least “some period of time,”
although the call back number is not pseudo-ANI or ESQK itself. (See id. at 45:25-46:5.)
Defendant’s expert Dr. Konchitsky’s opinion regarding the ALI and ANI element of claim 1 is
similar to that of Mr. Burton. (See Trial Tr. Dec. 19, 2013 AM at 63:24-64:18 (Konchitsky).)
To sum up the pertinent evidence, both sides agree that ESRK (or pseudo-ANI) achieves
substantially the same “function, way and result” for purposes of identifying and routing incoming
10
The ANI and ALI requirements only appear in claim 1, which was not asserted against Defendant TCS. (See
Verdict Form, Dkt. No. 155 at 1-2.)
11
Based on the testimony of Dr. Williams, Mr. Haynie and Mr. Burton, it is not entirely clear, though likely, that
ESRK and pseudo-ANI, both associated with a specific wireless call, are in fact the same thing with different names.
35
wireless calls to the appropriate PSAP, as ANI and ALI with wireline calls. The parties further
agree to the same as to ESQK in the context of identifying and routing VoIP calls. Defendants’
primary basis for asserting that ESRK and ESQK are not the equivalents of ANI/ALI is that, unlike
ANI, ESRK and ESQK are not themselves dialable call-back numbers. The Court, however,
disagrees that such difference should be afforded substantial weight in the equivalency analysis.
Neither the plain language of claim 1 nor the Court’s claim construction requires that ANI, or the
equivalents thereof, must function as a call-back number. Claim 1 makes it clear that ANI and
ALI are used to (1) identify “a communication device from which [an] incoming call originated”;
and (2) for the “central data manager” to route the incoming call to the appropriate PSAP. As
noted above, both sides agree that ESRK and ESQK are equivalents to ANI and ALI for purposes
of identifying and routing incoming calls to the appropriate PSAP. Indeed, the evidence shows
that microDATA’s system uses the same source code and logic to route all three types of incoming
calls, regardless of whether the call is associated with ANI/ALI, ESRK or ESQK. (See Trial Tr.
Dec. 16, 2013 PM at 91:14-92:11 (Williams).) That ESRK and ESQK are not themselves
callback numbers does not disturb the finding that they achieve substantially the same “function,
way and result” as ANI/ALI “in the context of [claim 1].”12 See Warner-Jenkinson, 520 U.S. at
40. Therefore, the Court agrees with Cassidian that the great weight of the evidence confirms that
microDATA’s system infringes the ANI/ALI element of claim 1 as recited above.13 Accordingly,
12
Indeed, Defendant’s witness Mr. Burton admitted that, though ESRK and ESQK are not themselves callback
numbers, they are associated with a callback number through which the accused system may dial back to the original
caller within a certain period of time. (See Trial Tr. Dec. 18, 2013 PM at 45:25-46:5 (Burton).)
13
Though never presented to the jury, Defendants made the additional argument in their response brief that Plaintiff
has failed to present testimony as to how ESRK and ESQK are equivalent to ANI/ALI for purposes of being
“analyz[ed] and record[ed]” by the “on-site server” of the “centralized secure facility.” (See ’898 Patent Ex Parte
Reexamination Certificate, 1:53-56.) The Court disagrees. As noted above, Dr. Williams testified that
microDATA’s system uses source code and logic that process the three different types of calls the same way. (See
Trial Tr. Dec. 16, 2013 PM at 91:14-92:11 (Williams).) Dr. Williams further testified as to how ANI and ALI are
36
a finding to the contrary would be against “the great weight of the evidence.”14
c.
Wide Area Network
Cassidian further argues that the great weight of the evidence confirms that Defendant
microDATA is liable for directly or indirectly infringing the “wide area network” element of claim
1. Claim 1 describes an “emergency services communication system, comprising…a wide area
network interfaced with each of the plurality of remote terminals.” (’898 Patent Ex Parte
Reexamination Certificate, 1:33-34 (emphasis added).) Both sides agree that microDATA does
not sell a wide area network (“WAN”) to its customers. At trial, Cassidian presented two theories
under which microDATA’s system allegedly infringed the WAN element of claim 1. First,
Cassidian alleged that microDATA “directs and controls” the provision of the WAN element.
Second, Cassidian asserted that microDATA indirectly infringes claim 1 through active inducing
or contributing to the direct infringement. The Court will address each of these two theories in
turn.
i.
Direct infringement – direct and control
At trial, the jury was instructed that claim 1 “may be directly infringed if one party has
control over the practice of each and every element of the claimed invention so that the practice of
all elements of the claimed invention is attributable to the controlling party.” Trial Tr. Dec. 20,
analyzed and recorded in microDATA’s system. (See id. at 103:21-104:8; 125:8-20.) Such testimony of Dr.
Williams was un-contradicted at trial. Further, though testifying to TCS’s rather than microDATA’s accused system,
Mr. Burton confirmed that the system follows “a similar flow” to analyze pseudo-ANI and ESQK as it does with ANI.
(See Trial Tr. Dec. 18, 2013 PM at 26:10-28:16 (Burton).) Therefore, contrary to Defendants’ argument, both sides
have presented consistent evidence as to how ESRK (pseudo-ANI) and ESQK are equivalent to ANI/ALI for the
“analyzing and recording” element of claim 1.
14
Defendants have reiterated their pre-trial contention that the “each of” phrase in claim 1 requires all incoming calls
to the accused system to be associated with ANI and ALI, or the equivalents thereof. (See Dkt. No. 148 at 13.)
Plaintiff denies that such claim requirement exists. The Court, however, finds it unnecessary to resolve this dispute.
Even assuming Defendants were correct, the great weight of the evidence confirms that all three types of calls to
microDATA’s system are associated with ANI and ALI, or the equivalents thereof. Defendants’ purported claim
requirement has been satisfied.
37
2013 AM at 34:14-18; Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008).
The jury was further instructed that “mere arms-length cooperation will not give rise to direct
infringement by any party.” Trial Tr. Dec. 20, 2013 AM at 35:2-5; Muniauction, 532 F.3d at
1329.
Cassidian’s expert Dr. Williams testified that microDATA’s X-Solution products use
ESInet – a Wide Area Network – to deliver “particular call types to particular remote terminals.”
(Trial Tr. Dec. 16, 2013 PM at 62:3-15 (Williams).) Dr. Williams explained that the ESInet is
“interfaced with” remote terminals as recited in claim 1, such that information carried by ESInet
can flow to those remote terminals. (Id. at 62:15-19.) Dr. Williams further testified that, even
assuming that ESInet were supplied by someone other than microDATA, he would not alter his
opinion regarding microDATA’s infringement, because microDATA “specifies how that Wide
Area Network needs to operate,” “causes that Wide Area Network to be connected to the remote
terminals,” and “tests and installs equipment that uses the Wide Area Network.”
(Id. at
62:20-63:4.) Dr. Williams based his opinions on three documents. One is a document from
AT&T titled “AT&T ESInet to i3 PSAP CPE Interface Specification.” (PX0031.) According to
Dr. Williams, this document describes the specification for an interface between ESInet and
AT&T’s “customer premise equipment” (“CPE”), and it is microDATA who provided the actual
specification regarding how the “ESInet would interface with the CPE.” (Trial Tr. Dec. 16, 2013
PM at 63:16-64:8 (Williams).)
Further, the jury was presented with an “Order between
microDATA GIS, Inc. and AT&T Services, Inc,” which described a set of work to be delivered by
microDATA to AT&T. (Id. at 64:9-17.) Dr. Williams opined that mciroDATA participated in
“actually specifying the details of the Wide Area Network and how it interfaces with its
38
equipment” within this Order.
(Id. at 64:16-22.)
Finally, Cassidian showed the jury an
agreement between microDATA and Larimer County, Colorado for the “installation and
maintenance of 9-1-1 telephone system.” (PX0053.) Dr. Williams testified that Exhibit 1 to this
agreement is a document drafted by microDATA describing the “technical specifications for what
needs to occur” in order for this 9-1-1 system to be “installed and declared operational.” (Trial
Tr. Dec. 16, 2013 PM at 65:10-13 (Williams).) Specifically, Cassidian focused on the following
excerpt in the agreement regarding the WAN connection:
WAN
The ECDCs at the Loveland Police Department and the Poudre Emergency
Communications Center (Fort Collins) are engineered to be interconnected by a
redundant Metro Ethernet, provided by Century Link, with a minimum of 20MB of
bandwidth. LETA and/or CenturyLink will be responsible for the installation,
ongoing maintenance, and all costs associated with the required Metro Ethernet, up
to and including the media conversion equipment that is responsible for the
Ethernet hand off to the routing environment. This shall be done in accordance with
microDATA recommendations and specifications.
(PX0053 at MDINC0001138-1139 (emphasis added).)
Cassidian additionally pointed to microDATA’s witness Christine Heinrich’s testimony
about microDATA’s business relationship with WAN providers, particularly AT&T.
Ms.
Heinrich testified to a contract between microDATA and AT&T for microDATA to provide
certain software and services to AT&T. (Trial Tr. Dec. 17, 2013 PM at 89:23-90:10 (C.
Heinrich).)
Ms. Heinrich further testified that, according to a provision of the contract,
microDATA were to provide support and trouble-shooting services in case any problem came up
during the implementation of ESInet. (Id. at 92:19-93:12.) In discussing another contract, Ms.
Heinrich testified that microDATA sold call handling services to certain customers, where the
calls were handled with “microDATA technology in the ESInet, both delivered through AT&T.”
39
(Id. at 97:18-24.) Additionally, Ms. Heinrich explained that microDATA’s software system
cannot run without certain building blocks, such as WAN, which are specified in microDATA’s
“statement of work.” (Id. at 100:21-4.)
On the other hand, Defendant microDATA argued that it did not direct or control provision
of the WAN element of claim 1. Dr. Konchitsky testified that microDATA neither sold WAN to
its customer nor told its customer what kind of network the customer should implement. (Trial
Tr. Dec. 19, 2013 AM at 69:8-25 (Konchitsky).)
Further, Mr. Heinrich confirmed that
microDATA’s X-Solution software did not include a WAN. (Trial Tr. Dec. 18, 2013 AM at
106:21-23 (Heinrich).) Mr. Heinrich explained that implementing a WAN is the responsibility of
microDATA’s customers while microDATA itself only developed and sold software. (Id. at
106:24-107:8.)
Viewing all the pertinent evidence, the Court finds that, despite Dr. Konchitsky’s
testimony to the contrary, the documentary evidence substantially demonstrated that microDATA
did specify to certain of its customers the kind of network upon which the customers should
implement microDATA’s software system.
(See, e.g., PX0053 at MDINC0001138 (“The
ECDCs at the Loveland Police Department and the Poudre Emergency Communications Center
(Fort Collins) are engineered to be interconnected by a redundant Metro Ethernet, provided by
Century Link, with a minimum of 20MB of bandwidth.”).) However, it is less clear whether such
specification amounts to “direct and control” over its customers such that implementation of the
WAN element should be attributable to microDATA. See Muniauction, 532 F.3d at 1329. The
jury was instructed that “mere arms-length cooperation is insufficient to prove direct
infringement.” (Trial Tr. Dec. 20, 2013 AM at 35:2-5.) Almost all evidence Cassidian relied on
40
to prove “direct and control” comes from contracts between microDATA and a customer, under
which microDATA was to deliver its X-Solution product to the customer and also to provide
certain trouble-shooting and maintenance services. Meanwhile, Mr. Heinrich testified that,
pursuant to the terms of the contract, the customer bore the responsibility to implement a WAN
upon which microDATA’s technology may operate.
(See Trial Tr. Dec. 18, 2013 AM at
106:21-23 (Heinrich); PX0053 at MDINC0001138-1139 (“LETA and/or CenturyLink will be
responsible for the installation, ongoing maintenance, and all costs associated with the required
Metro Ethernet…”).) Therefore, a reasonable jury could have found that a customer implemented
a WAN per microDATA’s specification simply as part of the “arms-length cooperation” between
the two parties; and not, as Cassidian argues, did so under microDATA’s control or direct.
Accordingly, a finding that microDATA did not direct or control provision of the WAN element of
claim 1 is not “against the great weight of the evidence.”
ii.
Indirect infringement – contributory infringement
Cassidian next argues that the great weight of the evidence demonstrates at least
microDATA’s liability for contributory infringement.15 At trial, the jury was instructed as to the
law governing contributory infringement.
(Trial Tr. Dec. 20, 2013 AM at 38:18-39:25.)
Contributory infringement prohibits sale and importation into the United States a component or
apparatus for use in a patented process that has no use except through practice of the patented
method. Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1374 (Fed. Cir. 2003). 35 U.S.C. §
15
Though, in its opening brief, Cassidian also argues that the great weight of the evidence confirms microDATA’s
liability for active inducement, it has failed to provide proper evidentiary support for such argument. (See Dkt. No.
184 at 52-53.) For example, Cassidian has failed to point to any evidence in the record demonstrating that
microDATA encouraged its customers to perform certain acts, knowing that such acts would constitute infringement.
See Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011). The evidence Cassidian subsequently
proffered focuses on its contributory infringement theory alone. (See Dkt. No. 199 at 30-31.)
41
271(c) sets forth the framework for proving contributory infringement:
Whoever offers to sell or sells within the United States or imports into the United
States a component of a patented machine, manufacture, combination or
composition, or a material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same to be especially
made or especially adapted for use in an infringement of such patent, and not a
staple article or commodity of commerce suitable for substantial noninfringing use,
shall be liable as a contributory infringer.
35 U.S.C. § 271(c).
At trial, the evidence showed that Defendants microDATA and TCS both knew about the
’858 Patent no later than the time they received Cassidian’s notification. (Trial Tr. Dec. 18, 2013
AM at 30:9-31:3 (Ginter); Trial Tr. Dec. 18, 2013 AM at 77:20-78:4 (Heinrich).) However, Mr.
Heinrich testified that microDATA had not changed its products in response to the notice letter
because they were advised by outside counsel that their products did not infringe the ’858 Patent.
(Trial Tr. Dec. 18, 2013 AM at 78:5-15; 80:5-13 (Heinrich).) No other evidence was presented as
to the intent requirement for contributory infringement.
As to the requirement that Defendants’ products had no “substantial noninfringing use,”
neither side identified evidence bearing directly on this issue. Cassidian merely contends that
Defendants have failed to assert any substantial non-infringing use for their products. (See Dkt.
No. 199 at 30.) Defendants, on the other hand, cite to a portion of the Court’s jury instruction as
“testimony” establishing “substantial noninfringing use.” (See Dkt. No. 200 at 35 n.121 (citing
Trial Tr. Dec. 20, 2013 AM at 39:7-8).) Ultimately, however, Cassidian bears the burden to prove
that Defendants’ products have no substantial noninfringing use, and, as noted above, it has failed
to carry such burden. Therefore, the Court finds that, despite evidence establishing Defendants’
knowledge of the ’858 Patent, Cassidian has not met its clear burden to demonstrate that
42
Defendants’ products have no substantial noninfringing use. A finding that Defendants did not
contribute to the infringement of the ’858 Patent is not “against the great weight of the evidence.”
In summary, the Court finds that the great weight of the evidence confirms that
microDATA did infringe the ALI/ANI element of claim 1. However, it is not “against the great
weight of the evidence” for the jury to find that: (1) microDATA and TCS’s databases are not
“partitioned,” as required by all asserted claims; and (2) microDATA did not directly or indirectly
infringe the “wide area network” element of claim 1. Given that “[a]n accused device cannot
infringe, as a matter of law, if even a single limitation is not satisfied,” the jury’s non-infringement
verdict stands. See Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed. Cir. 1998).
Accordingly, the Court DENIES Cassidian’s motion for a new trial on the issue of infringement.
IV..
CONCLUSION
For the reasons stated above, the Court GRANTS-IN-PART and DENIES-IN-PART
Cassidian’s motion for judgment as a matter of law with respect to the jury’s invalidity verdict, and
DENIES Cassidian’s motion for a new trial on the issue of validity or infringement.
Notwithstanding the foregoing, the jury’s verdict of non-infringement and invalidity stands, and is
not altered by the above.
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 8th day of August, 2014.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
43
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?