Smartflash LLC et al v. Apple Inc, et al

Filing 483

ORDER ADOPTING REPORT AND RECOMMENDATIONS for 389 Report and Recommendations, and denying Apple's and Defendants' Motions for Summary Judgment Regarding No Willful Infringement and No Indirect Infringement (6:13CV447, 267 ; 6:13CV448, Doc. No. 318). Signed by Judge Rodney Gilstrap on 2/13/15. (mjc, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
TYLER DIVISION
SMARTFLASH LLC, et al.,
Plaintiffs,
v.
APPLE INC., et al.,
Defendants.

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Plaintiffs,
v.
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SAMSUNG ELECTRONICS CO., LTD. §
et al.,
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Defendants.
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CASE NO. 6:13cv447-JRG-KNM

JURY TRIAL DEMANDED

SMARTFLASH LLC, et al.,

CASE NO. 6:13cv448-JRG-KNM
JURY TRIAL DEMANDED

ORDER
Before the Court are Apple’s and Defendants’ Motions for Summary Judgment Regarding
No Willful Infringement and No Indirect Infringement (6:13CV447, Doc. No. 267; 6:13CV448,
Doc. No. 318) and the Magistrate Judge’s Report and Recommendation (6:13CV447. Doc. No. 389;
6:13CV448, Doc. No. 435) recommending that the Motions be denied. Having considered the
Objections to the Report and Recommendation Regarding Apple’s and Defendants’ Motions for
Summary Judgment Regarding No Willful Infringement and No Indirect Infringement (6:13CV447,
Doc. No. 417, 6:13CV448, Doc. No. 447), and having conducted a de novo determination of those
portions of the Report and Recommendation as to which objection was made, the Court finds no
error in the Magistrate Judge’s findings.

To clarify, Defendants point out that the Court stated that patents-in-suit were cited as prior
art in a Samsung patent when, instead, Smartflash’s patent application was cited. The cited patent
application is a prior publication of the earliest patent-in-suit—U.S. Patent No. 7,334,720—shares a
nearly identical specification, and includes claims substantially similar to those in the issued
patent. 1 Defendants rely on State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir.
1985), for the proposition that a patent must exist for one to knowingly infringe it. 2 As Defendants
note, knowledge of a patent application is not enough on its own to “establish willfulness.”
However, knowledge of a patent application is probative evidence of whether Defendants knew or
should have known about the likelihood of infringement and may be supplemented by other
disputed facts that could support a finding of willfulness by a jury. E.g. Tomita Technologies USA,
LLC v. Nintendo Co., No. 11 CIV. 4256, 2012 WL 2524770, at *10 (S.D.N.Y. June 26, 2012);
DataTreasury Corp. v. Wells Fargo & Co., No. 2:06-CV-72, 2010 WL 5140741, at *4 (E.D. Tex.
Sept. 27, 2010); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1336
(Fed. Cir. 2009). Additionally, that the patent application was cited in the Samsung patent was not
the sole reason the Magistrate Judge recommended denial of the summary judgment motion. The
Report and Recommendation recognized that Smartflash presented other evidence that may be used
to show willfulness, such as disputed facts about Mr. Racz’s commercialization discussions with
Samsung.

Certainly, the distinction between the patents-in-suit and the patent application is

insufficient to support granting a motion for summary judgment.
1

All the patents-in-suit share an identical specification, and the cited application issued as a patent four months prior to
the Samsung patent.
2

In State Industries, the Federal Circuit further explained:
A “patent pending” notice gives one no knowledge whatsoever. It is not even a guarantee that an
application has been filed. Filing an application is no guarantee any patent will issue and a very
substantial percentage of applications never result in patents. What the scope of claims in patents that
do issue will be is something totally unforeseeable.

751 F.2d at 1236.

2

.
The Court hereby adopts the findings and recommendations of the Magistrate Judge.
Accordingly,
IT IS ORDERED that Apple’s and Defendants’ Motions for Summary Judgment Regarding
No Willful Infringement and No Indirect Infringement (6:13CV447, Doc. Nos. 267; 6:13CV448,
Doc. No. 318) are DENIED.

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 13th day of February, 2015.

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RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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