Metaswitch Networks Ltd v. GENBAND US LLC et al

Filing 347

MEMORANDUM ORDER. Signed by Judge Rodney Gilstrap on 3/16/2016. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
METASWITCH NETWORKS LTD.
v.
GENBAND US LLC, ET AL.

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Case No. 2:14-cv-744-JRG-RSP

MEMORANDUM ORDER
Before the Court is a Motion for Summary Judgment of Invalidity of Patent No. 8, 687,640
filed by Genband US LLC (“Genband”). (Dkt. No. 176). Also before the Court is Genaband’s
Motion for Summary Judgment on the CableLabs Defenses. (Dkt. No. 255). Metaswitch Networks
Ltd. (“Metaswitch”) opposes both motions.
I. LAW
Summary judgment should be granted “if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.
Civ. P. 56(a). Any evidence must be viewed in the light most favorable to the nonmovant. See
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986) (citing Adickes v. S.H. Kress & Co., 398
U.S. 144, 158–59 (1970)). Summary judgment is proper when there is no genuine issue of material
fact. Celotex v. Catrett, 477 U.S. 317, 322 (1986). “By its very terms, this standard provides that
the mere existence of some alleged factual dispute between the parties will not defeat an otherwise
properly supported motion for summary judgment; the requirement is that there be no genuine
issue of material fact.” Anderson, 477 U.S. at 247–48. The substantive law identifies the material
facts, and disputes over facts that are irrelevant or unnecessary will not defeat a motion for
summary judgment. Id. at 248. A dispute about a material fact is “genuine” when the evidence is
“such that a reasonable jury could return a verdict for the nonmoving party.” Id.

The moving party must identify the basis for granting summary judgment and identify the
evidence demonstrating the absence of a genuine issue of material fact. Celotex, 477 U.S. at 323. If
the moving party does not have the ultimate burden of persuasion at trial, the party “must either
produce evidence negating an essential element of the nonmoving party’s claim or defense or show
that the nonmoving party does not have enough evidence of an essential element to carry its
ultimate burden of persuasion at trial.” Nissan Fire & Marine Ins. Co., Ltd. v. Fritz Cos., Inc., 210
F.3d 1099, 1102 (9th Cir. 2000).
II. ANALYSIS
A. Summary Judgment of Invalidity
Genband moves for summary judgment that claim 8 of Patent No. 8,687,640 (the ’640
Patent) is invalid as anticipated by Patent Application Pub. No. 2009/0010270 to Ejzak (“Ejzak”)
under 35 U.S.C. § 102 or that claim 8 of the ’640 Patent is obvious in light of the combination of
Ejzak and “Delivering Secure IP-Based Services” (“Intel”) under 35 U.S.C. § 103. (Dkt. No. 176).
“To anticipate a claim, a single prior art reference must expressly or inherently disclose
each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir.
2008). A claim limitation is inherently disclosed if it is “necessarily present . . . in the single
anticipating reference.” Schering Corp. v. Geneva Pharmaceuticals, 339 F.3d 1373, 1377 (Fed.
Cir. 2003). “If [a] claimed invention was ‘described in a printed publication’ either before the date
of invention, 35 U.S.C. § 102(a), or more than one year before the U.S. Patent application was
filed, 35 U.S.C. § 102(b), then that prior art anticipates the patent.” Finisar, 523 F.3d at 1334. A
patent is invalid under § 103 “if the differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill in the art to which said subject matter

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pertains.” Ivera Med. Corp. v. Hospira, Inc., 801 F.3d 1336, 1344 (Fed. Cir. 2015). “Obviousness
is a legal question based on the following underlying factual inquiries: (1) the scope and content of
the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed
invention and the prior art; and (4) secondary evidence of nonobviousness.” Id.
Metaswitch argues that Ejzak is fundamentally different from the ’640 Patent and does not
disclose even a single limitation of claim 8. Many of the differences Metaswitch identifies are
premised on its contention that the ’640 patent and Ejzak have incompatible network topologies.
To paraphrase Metaswitch’s position: in Ejzak, SIP signaling is transmitted through application
layer gateways (“ALGs”) in the signaling path, whereas media information is transmitted through
border gateways (“BGs”) in a separate media path. (Dkt. No. 189 at 10). 1 Further, Metaswitch
contends the ’640 Patent claims a system “where media gateways 102 and 108 take the form of
Session Border Controllers (SBCs) processing both the signaling and media paths.” (Id. at 11–12)
(citing, e.g., ’640 Patent, at 8:54-67).
Against this backdrop, Metaswitch raises material factual issues about whether Ejzak
actuallyfact discloses the limitations of claim 8. For example, Metaswitch argues that Ejzak does
not disclose the claim 8 limitation “receiving, at said media gateway, an inbound communication
session setup request message . . . said inbound communication session setup request message
being transmitted along an inbound signaling path to said media gateway” because the “media
gateway” in Ejzak (the BG) is connected to the media path whereas the separate ALG is connected
to the signaling path. (Dkt. No. 189 at 13–16). Metaswitch cites the testimony of its expert Dr.

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Metaswitch cites the report of Genband’s expert Mr. Bress to support its position. See (Dkt. No.
176-7 at ¶ 459) (“SIP signaling is transmitted between the VoIP telephones via user agent (UA)
endpoints UA1 101 and UA2 131 and application layer gateways (ALGs) 103, 109, 115, and 121
over the signaling path, while media information is transmitted between the telephones via the UA
endpoints and border gateways (BGs)”).

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Williams to support its position. (Dkt. No. 189-2 at ¶¶ 130, 156-57); see also Vasudevan Software,
Inc. v. MicroStrategy, Inc., 782 F.3d 671, 683 (Fed. Cir. 2015) (quoting Provenz v. Miller, 102
F.3d 1478, 1490 (9th Cir. 1996)) (“As a general rule, summary judgment is inappropriate where an
expert’s testimony supports the non-moving party’s case.”). Metaswitch raises comparable fact
disputes about the remaining limitations of claim 8. (Dkt. No. 189 at 16–22).
Metaswitch’s arguments, supported by evidence and expert testimony, create material fact
questions that defeat summary judgment on the issue of anticipation under § 102. These same fact
questions, combined with additional disputes on the issue of whether the Intel reference was
publicly available (Id. at 22–24), whether one of ordinary skill in the art would have been
motivated to combine Ejzak and Intel (Id. at 24–26), and whether secondary considerations
undermine a finding of obviousness (Id. at 26–27) compel a denial of summary judgment on the
§ 103 issue as well.
B. Summary Judgment Regarding CableLabs
Metaswitch argues it is entitled to a royalty-free license to Patent No. 8,600,006 (the ’006
Patent) under the CableLabs IPR Agreements with either General Bandwidth, Nortel Networks
Cable Solutions Inc., or both. See, e.g. (Dkt. No. 231 at 5). Genband moves for summary judgment
because it argues the CableLabs IPR Agreements only confer a license covering products “with an
interface that fully complies with any version” of the CableLabs Specification, and Metaswitch
cannot prove its accused products fully comply with the Specification. (Dkt. No. 255 at 8); see also
(Dkt. No. 255-5; “IPR Agreement”). Metaswitch contests Genband’s Motion, arguing that that the
interface of its accused products fully complies with the Specification and that other portions of the
IPR Agreement would confer a license even if the accused products were not fully compliant.
(Dkt. No. 260).

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This issue is rife with material factual disputes and summary judgment is therefore
improper. For example, Metaswitch and Genband disagree about the requirements for full
compliance with the CableLabs Specification. Metaswitch has adduced evidence (in the form of
CableLabs documents) that a compliant application server need only implement “some aspects” of
the Specification. See (Dkt. No. 260-1 at 19). Moreover, Dr. Williams has opined that the accused
products “are designed to implement at least the relevant portions of the above [CableLabs]
standards.” (Dkt. No. 255-10 at ¶ 293). Summary judgment is rarely appropriate where an expert’s
opinion supports the non-movant because a reasonable jury could credit this evidence and
conclude that the accused products “fully comply.”
III. CONCLUSION
For the foregoing reasons, Genband’s Motion for Summary Judgment of Invalidity of
Claim 8 of the ’640 Patent (Dkt. No. 176) is DENIED and Genband’s Motion for Summary
Judgment Regarding CableLabs is DENIED (Dkt. No. 255).

So Ordered this
Mar 16, 2016

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