Intellectual Capital Holdings Limited v. LG Electronics USA, Inc. et al

Filing 146

MEMORANDUM ORDER; adopting 143 Report and Recommendations, granting 130 SEALED MOTION for Summary Judgment of Non-Infringement filed by Samsung Electronics America, Inc., granting 128 SEALED MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEM ENT filed by Mitsubishi Digital Electronics America, Inc., granting 129 SEALED PATENT MOTION MOTION FOR SUMMARY JUDGMENT OF NONINFRINGEMENT filed by Toshiba America Consumer Products, LLC. Signed by Judge David Folsom on 8/1/11. (mrm, )

IN THE UNITED STATES DISTRICT COURT
OF THE EASTERN DISTRICT OF TEXAS
TEXARKANA DIVISION
ICHL, LLC d/b/a INTELLECTUAL
CAPITAL HOLDINGS LIMITED
Plaintiff
V.
LG ELECTRONICS, INC., ET AL.
Defendants

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No. 5:08CV177

MEMORANDUM ORDER
The above-entitled and numbered civil action was heretofore referred to United States
Magistrate Judge Caroline M. Craven pursuant to 28 U.S.C. § 636. The Report of the Magistrate
Judge which contains her proposed findings of fact and recommendations for the disposition of such
action has been presented for consideration.

Plaintiff filed objections to the Report and

Recommendation. The Court conducted a de novo review of the Magistrate Judge’s findings and
conclusions.
Plaintiff ICHL LLC, d/b/a Intellectual Capital Holdings Limited (“Plaintiff”) filed this
lawsuit against Mitsubishi Digital Electronics America, Inc., Samsung Electronics America, Inc.,
and Toshiba America Consumer Products, LLC (hereinafter “Defendants”), alleging infringement
of U.S. Patent No. 4,884,631 (“the ‘631 patent”). Plaintiff had previously filed two other lawsuits
alleging infringement of the same patent. See 5:08cv65 (“ICHL I”) and 5:08cv175 (“ICHL II”). This
lawsuit (“ICHL III”) was referred to the Magistrate Judge for pretrial purposes and was consolidated
for claim construction with the two earlier filed lawsuits.
On April 20, 2010, the Magistrate Judge issued a Memorandum Opinion and Order on claim
construction (the “Claim Construction Order”). (Dkt. No. 110). On May 4, 2010, Plaintiff filed

objections to the Claim Construction Order. On September 20, 2010, the undersigned overruled
Plaintiff’s objections and affirmed the Magistrate Judge’s Claim Construction Order.
On October 20, 2010, Plaintiff proposed that the parties in each case enter a joint stipulation
of non-infringement of the ‘631 patent as construed by the Court so that it could seek immediate
appellate review. The parties in ICHL I entered into a joint stipulation,1 and the parties in ICHL II
agreed to suspend proceedings in their case pending the resolution of the ICHL I appeal. The parties
in this case could not reach an agreement on the terms of a stipulation.
In late January of 2011, Defendants filed substantively consistent motions for summary
judgment of non-infringement. In each of its responses to Defendants’ motions, Plaintiff conceded
that summary judgment of non-infringement is proper for all three defendants based on the Court’s
construction of the “in intimate contact with said second surface” limitation. (See, e.g. Plaintiff’s
Response in Opposition to Defendant’s Motion for Summary Judgment (Dkt. No. 132) at pg. 2).
On June 23, 2011, the parties filed a joint motion to stay all of the upcoming pretrial and trial
deadlines pending resolution of Defendants’ previously filed motions for summary judgment (Dkt.
No. 141). In their joint motion, the parties indicated that a ruling on Defendants’ motions for
summary judgment would allow the parties to consolidate the appeal with that in the ICHL I case.
The parties all agreed that, in light of the Court’s Claim Construction Order, summary judgment is
appropriate at this time. (Dkt. No. 141 at pgs. 2-3).
After granting the joint motion to stay all the pretrial and trial deadlines, the Magistrate Judge
entered a Report and Recommendation, recommending Defendants’ motions for summary judgment

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The appeal in ICHL I is in the briefing stage before the Federal Circuit.
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be granted. Plaintiff filed objections to the Report and Recommendation, asserting the Magistrate
Judge should have granted summary judgment on only one of the specific grounds raised in
Defendants’ motions, namely that Defendants’ heat sinks do not infringe the “bonded” and “in
intimate contact with” limitations of Claims 2 and 3 of the ‘631 patent as those limitations have been
construed by the Court. To the extent the Report and Recommendation is intended to recommend
summary judgment on any grounds other than non-infringement of the “bonded” and “in intimate
contact with” limitations, Plaintiff asserts the Report and Recommendations is erroneous. Plaintiff
further requests that the Court abate this matter and wait to address the summary judgment motions
until after the United States Court of Appeals for the Federal Circuit has the opportunity to provide
a decisive ruling on the disputed claim construction issues in ICHL I.
In response, Defendants point out that Plaintiff previously stipulated that a ruling on
Defendants’ motions for summary judgment would allow the parties to consolidate the appeal in this
case with that in the ICHL I case. Defendants assert Plaintiff offers no explanation for why it now
seeks to thwart consolidation of the appeals. Defendants further assert this Court would promote the
interests of fairness, justice, and economy by allowing all defendants in the two ICHL cases to be
heard in one appeal before the Federal Circuit. Defendants request the Court grant summary
judgment on all three grounds. In the alternative, Defendants request the Court enter judgment on
at least the one undisputed ground and deny Plaintiff’s request for a stay.
Given Plaintiff’s previous stipulation and its failure to now show good cause for a stay in this
case pending the appeal of the ICHL I case, the Court declines to abate this matter pending resolution
of the appeal. Instead, the Court is inclined to limit the Court’s summary judgment to the one
undisputed ground raised in Defendants’ motions, namely that Defendants are entitled to summary
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judgment based on their non-infringement of the “bonded” and “in intimate contact with”
limitations. The Court, having reviewed the relevant briefing, the Report and Recommendation, the
objections, and the response to the objections, adopts the Report and Recommendation of the
Magistrate Judge as the findings and conclusions of the Court, with the additional clarification that
summary judgment is being granted only as to the one undisputed ground raised in Defendants’
motions. Accordingly, it is hereby
ORDERED that Defendant Mitsubishi Digital Electronics America, Inc.’s Motion for
Summary Judgment of Non-infringement (Docket Entry # 128), Defendant Toshiba America
Consumer Products, LLC’s Motion for Summary Judgment of Non-infringement (Docket Entry #
129), and Defendant Samsung Electronics America, Inc.’s Motion for Summary Judgment of Non-

. infringement (Docket Entry # 130) are GRANTED to the extent that Defendants’ accused products
do not infringe the “bonded” and “in intimate contact with” limitations of Claims 2 and 3 of the ‘631
patent.

SIGNED this 1st day of August, 2011.

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DAVID FOLSOM
UNITED STATES DISTRICT JUDGE

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