Samsung Electronics Co., Ltd. et al v. NVIDIA Corporation et al
Filing
602
MEMORANDUM OPINION. Signed by District Judge Robert E. Payne on 12/16/2015. Memorandum Opinion electronically sent to all counsel of record. (sbea, )
I
IN
THE
FOR THE
UNITED
STATES
DISTRICT
L
COURT
EASTERN DISTRICT OF VIRGINIA
DEC I 6
Richmond Division
L .
CLERK. U.S. DISTRICT COUHl
RICHt.iOND. VA
SAMSUNG ELECTRONICS CO.,
et al. ,
LTD,
Plaintiffs,
Civil Action
V.
No.
3:14cv757
NVIDIA CORPORATION,
et al.,
Defendants.
MEMORANDUM OPINION
This
MOTION
matter
FOR
is
PARTIAL
before
SUMMARY
reasons set forth below,
the
Court
JUDGMENT
on
Defendant
(Docket
No.
NVIDIA's
294).
For
the
the motion will be granted in part and
denied in part.
I.
Samsung
America,
Electronics
Inc.
Corporation,
Co.,
("Samsung")
Old
Velocity Holdings,
Micro,
complete
and
Ltd.
filed
Inc.
the
partial summary judgment,
this
Samsung
case
Velocity
Electronics
against
Micro,
NVIDIA
Inc.
and
alleging violation of several
(Compl.,
parties
and
f/k/a
LLC ("NVIDIA")
claims of several patents.
now
BACKGROUND
Docket No.
have
filed
1).
Discovery is
cross-motions
for
although Samsung subsequently withdrew
its motion for partial summary judgment.
The
FOR
papers
PARTIAL
MEMORANDUM
JUDGMENT
REPLY
SUMMARY
OF
TO
Nos.
IN
LAW
(Docket
OPPOSITION
(Docket
relevant
IN
to
JUDGMENT
SUPPORT
Nos.
295
and
SUPPORT
OF
THEIR
307)
ITS
(Pl.'s
MOTION
alleges
DEFENDANTS'
No.
294),
MOTION
FOR
FOR
FOR
PARTIAL
PARTIAL
and
SUMMARY
SAMSUNG'S
SUMMARY
0pp.),
MOTION
DEFENDANTS'
PSJ Mem.),
PARTIAL
PSJ
JUDGMENT
DEFENDANTS'
SUMMARY
JUDGMENT
(Def.'s PSJ Reply).^
II.
NVIDIA
are
(Def.'s
MOTION
429)
(Docket Nos. 440 and 443)
motion
(Docket
OF
and
DEFENDANTS'
367
this
that
ISSUES
it
is
entitled
to
partial
summary
judgment on three grounds:
(1)
In inter partes proceedings against the Patent Trial and
Appeal
that,
Board
in
Samsung
("PTAB"),
NVIDIA's
has
judicially
taken
estopped
Samsung
view,
in
from
such
asserting
a
NVIDIA further contends
assert
that
estoppel,
that,
position
then
the
case,
here.
judicial
several
contradict
this
contrary
made
the
lack of written description.
^602
in
statements
positions
that
that
Samsung
contrary
is
position
if Samsung cannot
this
patent
case
is
due
to
invalid
for
(Def.'s PSJ Mem. 3-11);
' These docket numbers reflect the unsealed and sealed versions
of the papers.
2
(2)
Samsung is not entitled to pre-suit damages
or
was
importing
protected
from
infringing
pre-suit
provision of 35 U.S.C.
21);
The
'902
products,
damages
§
under
287(b)(1).
and
the
patent
is
cannot
predated
prior art.
(Def.'s PSJ Mem.
Samsung's responses state,
(A)
Samsung's
inconsistent
tribunal,
(B)
safe
thus
harbor
(Def.'s PSJ Mem.
11-
that
'602
patent
do
conception
need not
and
before
There
and
diligent
not
evince
the
PTAB
are
intent
to
deceive
judicial estoppel
the
use
disclose
of
estopped
memory
every
not
a
is in applicable.
data
from arguing
buffers,
embodiment,
not invalid for lack of written description.
0pp.
art,
'902 patent to antedate that
even if Samsung is
covers
prior
21-29).
statements
and
certain
in brief, that:
such that
Moreover,
by
establish
reduction to practice of the
(2)
is
and
Samsung
(1)
*902
'675 patents because NVIDIA lacked actual notice that
NVIDIA
(3)
for the
and
is
the
thus
(Pl.'s PSJ
1-10);
is
NVIDIA's
precludes
a
genuine
control
summary
suit damages.
over
dispute
its
of
material
overseas
judgment on
the
fact
manufacturer
about
which
availability of pre-
(Pl.'s PSJ 0pp. 11-22); and
(3)
There
is
a
genuine
Samsung's
diligence
precludes
summary
dispute
prior art.
material
reduction
judgment
on
about
practice
to
fact
which
antedating
the
asserted
{Pl.'s PSJ 0pp. 22-30).
III.
The
in
of
LEGAL STANDARD
standard
principles
FOR SUMMARY
for
JUDGMENT
resolving
motions
for
summary
judgment govern the analysis made here.
Pursuant to Federal Rule of Civil Procedure 56,
move for summary judgment,
the
case contains
a party may
and the Court must ascertain whether
sufficient
evidence
from which a
jury could
reasonably find for the nonmoving party. See Anderson v. Liberty
Lobby,
202
Inc..
477
(1986).
In
genuine dispute
unsupported
a
Va.
trier
and
368
the
106 S.
Court
fact
defenses
Ins.
Ct.
must
of
fact
to
exists
to
Co.,
find
744
is
for
F.
justifiable
inferences
L.
to
Supp.
Ed.
2d
whether
a
factually
trial.
2d
543,
See
545
whole could not lead
the
non-moving
appropriate." U.S.
party,
v.
Lee.
1991).
In reviewing a summary judgment motion,
all
91
prevent
from proceeding
judgment
(4th Cir.
2505,
determine
If "the record taken as a
disposition by summary
943 F.2d 366,
248,
of material
Auto-Owners
2010).
rational
242,
essence,
claims
Hostettler v.
(E.D.
U.S.
in
favor
of
the
a court "must draw
nonmoving
party."
United
States
(4th Cir.
mere
v.
1992)
scintilla
Anderson,
U.S.
(14
of
evidence
477 U.S.
preliminary
no
Transformer
(citing Anderson,
Wall.)
literally
Carolina
at 251
442,
448,
question
not
U.S.
978
at
preclude
F.2d
255).
20 L.Ed.
but
the
867
(1872)).
judge,
whether
not
there
832,
v.
"
Munson,
81 U.S.
IV.
A.
the onus of proof is
any
upon
Id.
there
is
which
a
. . .
(quoting Munson,
at 448) .
JUDICIAL ESTOPPEL AND LACK OF WRITTEN DESCRIPTION
('602)
Judicial Estoppel
The
law
of
the
judicial estoppel.
303
imposed.'"
81
MTjhere is a
jury could properly proceed to find a verdict for the party
upon whom
a
judgment.
whether
is
835
However,
summary
(citing Improvement Co.
for
evidence,
will
477
Co./
F.3d 1294,
regional
circuit
Minnesota Min.
1302-03
(Fed.
governs
& Mfq.
Cir.
2002).
Co.
As
the
v.
analysis
Chemque,
[jJudicial estoppel is a principle developed
party from talcing a
position in
a judicial proceeding that is inconsistent
with a stance previously taken in court ....
Three
elements
must
be
satisfied
Inc.,
explained by the
Fourth Circuit:
to prevent a
of
before
judicial estoppel will be applied. First,
the party sought to be estopped must be
seeking
to
adopt
a
position
that
is
inconsistent with a stance taken in prior
litigation . . . . The position at issue must
be one of fact as opposed to one of law or
legal
theory
....
Second,
the
prior
inconsistent
position
must
have
been
accepted by the court . . . . Lastly, the party
against
whom
judicial
estoppel
is
to be
applied must have intentionally misled the
court to gain unfair advantage .... This bad
faith
requirement
is
the
determinative
factor.
Zinkand
v.
Brown,
478
quotations omitted);
231,
241-42,
Univ.,
133
record
S.
638
(4th
see also Whitten v.
Ct.
2434,
suggests
Additionally,
in
634,
L.Ed.
any
2d
Cir.
565
(2013)
on
"ta]s an equitable doctrine,
the
discretion
of
the
(internal
Inc.,
by Vance
faith
bad
2007)
Fred's,
abrogated on other grounds
....
invoked
F.3d
v.
601
Ball
("Nothing
Whitten's
F.3d
State
in
the
part").
judicial estoppel is
district
court
and
with
the
recognition that each application must be decided upon its own
specific
facts
Memorial
Hosp.,
Whitten,
and
circumstances."
159
F.3d
192,
King
197
(4th
Herbert
Cir.
J.
1998);
Thomas
see
also
601 F.3d at 242.
NVIDIA's argument, briefly stated,
(1)
v.
In this proceeding,
covers
use
of
is that:
Samsung stated that the
"data
strobe
buffers"
when
*602 patent
those
data
strobe buffers are part of memory controllers;
(2)
In a PTAB proceeding, Samsung stated that the *602 patent
does
not
controllers;
disclose
the
data
strobe
PTAB relied on this
buffers
in
memory
statement making a
decision in an inter partes decision; and
(3)
Samsung should be judicially estopped from asserting that
the
^602
patent
covers
use
of
data
strobe
buffers
when
those data strobe buffers are part of memory controllers.
{Def.'s PSJ Mem.
3).
Samsung takes issue with all three factual contentions,
argues
that
any of
the
as
a
matter
three
of
elements
law NVIDIA has
required
for
not
judicial
and
adequately pled
estoppel
under
Fourth Circuit precedent.
1.
On April
NVIDIA
filed
another
Samsung's Assertedly Inconsistent Statements
30,
a
Samsung
2015
(after Samsung
request
patent
for
("the
inter
^734
initiated this
partes
patent"),
W34 patent was obvious in light of the
Mem,
4;
Pl.'s
PSJ 0pp.
2).
review
lawsuit),
("IPR")
alleging
'602 patent.
NVIDIA states that,
that
of
the
(Def.'s PSJ
as part of the
IPR,
Samsung argued that
not render] obvious
patent because the
the
'602 patent [does
any claim of the '734
'602 patent "does not
disclose a data strobe buffer for
controller"
....
Rather,
Samsung
a memory
asserted
that the '602 patent is "directed at a data
strobe buffer for use in a memory device."
(Def.'s PSJ Mem. 4-5)
that,
in this case,
'602
patent
(emphasis in memorandum). NVIDIA contends
Samsung argues a contrary position that the
discloses
embodiments
that
may
be
used
in
both
memory devices
and in a
memory controller.
{Def.'s
PSJ Mem.
5,
8) .
Samsung
does
not
believe
between its two positions.
Samsung
points
out
the
in
of
context
found
Mem.
that
particular
of
memory
in
'602
and
type
data
is
any
Samsung's
contradiction
of
did not
I PR
only covered a
whereas the
controller,
'602
of
patent
type
2 - 8 ) I n this case,
particular
that
a
context,
'602
type of data strobe buffers,
use
there
In its statement of additional facts,
that,
actually stated that
that
data
such
render
argument
particular
^734 patent covered the
strobe
that
buffers
in
the
had
claims
not
obvious.
(Pl.'s
PSJ
'734
'734
Samsung is arguing that any use of the
strobe
particular type of data
buffer
infringes
strobe buffer is
'602,
whether
used alone,
used
^ Samsung characterizes its position in simple terms as:
By
way
of
simple
analogy,
if
hypothetical
Patent
1
generally discloses a bicycle, but not tassels. Patent 1
would not anticipate or render obvious the claims of Patent
2, which specifically claims a bicycle with tassels ....
The asserted '602 Patent claims recite only a data strobe
buffer (a bicycle) . The fact that Samsung may have argued
that
the
'602
Patent does
not disclose a
data
strobe buffer
in a memory controller (a bicycle with tassels), does not
preclude the claims, which require only a data strobe
buffer (a bicycle) from being infringed by a data strobe
buffer that happens to be in a memory controller {a bicycle
that happens to have tassels."
(Pl.'s PSJ Mem. 7).
Samsung argues that before PTAB,
it argued
that Patent 1 does not render Patent 2 obvious, and in this
case, it is arguing that infringement of Patent 1 plus some
additional feature infringes Patent 1. (Pl.'s PSJ Mem. 7-8).
8
in
the
context
of
a
memory
controller,
or
used
in
any
other
context.
Stated somewhat simply,
•
The
^602 patent claims
plain (X)
•
Samsung's position is that:
or
(X)+Z or
(X).
Any use of
(X)+A,
Samsung claimed that the
render
obvious,
the
'734 claimed
because,
(X)+Z.
whether i t be
is infringement;
In the IPR,
^734
(X),
'602 patent did not
while the
*602 claimed
The addition of Z makes
(X),
'734 non-
obvious in light of '602;
•
Samsung accuses NVIDIA of
way of
(X)+Z,
the way;
•
infringing
its
'602
which necessarily involves using
does not teach
during
protect
(X)
along
and
The fact that Samsung stated that "'602 teaches
'602"
patent by
(X)
(X)+Z,
the
when
IPR
(X)
(X).
''602
so *734 is not obvious in light of
does
not
mean
that
*602
is used in the context of
does
{X)-fZ:
not
it
just means that (X)+Z is not obvious in light of (X)
^ As a rule, "[t]hat which infringes, if later, would anticipate,
if earlier." Peters v. Active Mfq. Co., 129 U.S. 530, 537, 9 S.
Ct. 389, 392, 32 L. Ed. 738 (1889). However, there is not enough
information in NVIDIA or Samsung's briefing to tell whether
NVIDIA is infringing '602 in exactly the same way that '734 was
anticipated (or made obvious) by *602.
In its Reply,
NVIDIA argues
that
Samsung argued the
difference between *602 and *734 was "fundamental," and that
Samsung is now arguing that the difference between *602 and
9
Thus,
from
the
statements
not
undisputed
before
appear
the
PTAB
contradictory
facts
and
or
its
on
the
record,
statements
inconsistent.
in
This
Samsung's
this
case
means
that
first requirement of judicial estoppel is not met.
E.g.,
V.
("Since
Braswell
Servs.
Grp.,
Inc.,
134
positions are not inconsistent,
2.
F.3d
219,
224
to
that
the
satisfy
PTAB
for
the
second
accepted
does
not
argues,
of
judicial
estoppel:
assertedly
inconsistent
position.
the
to
institute
that
essentially,
PTAB
did
''602
not
the
IPR
'734 patent]."
that
teach memory controllers
'734's patent on
NVIDIA would
PTAB "adopted Samsung's position as its sole
declining
Samsung
these
requirement
[regarding obviousness of the
9).
Sedlack
Whether The PTAB "Accepted" Samsung's Position
NVIDIA argues that
basis
the
judicial estoppel cannot apply.)
Even if Samsung's arguments were inconsistent,
have
do
the
(such
requested
its
decision
PTAB
that
on
NVIDIA
{Def.'s PSJ Mem. 6,
accepted
it does
plus memory controllers
base
by
"'602
not make
obvious')," but
NVIDIA's
erroneous
misrepresentation that "'602 is never infringed when used in the
context of a memory controller." (Pl.'s PSJ 0pp. 3).
NVIDIA's
process
is
"trivial."
(Def.'s
PSJ
Reply
1).
However,
because NVIDIA does not argue that NVIDIA's process is identical
to '734, it is not inconsistent for Samsung to argue that "the
difference
between
'734
and
'602
is
fundamental,
but
difference between NVIDIA's process and '602 is trivial."
10
the
Because Samsung's statements before the PTAB and this Court
were not inconsistent,
an
inconsistent
statements
statement.
are
NVIDIA
Moreover,
inconsistent,
description of the
event,
the PTAB cannot possibly have relied upon
PTAB
has
decision
not
if
Samsung's
that
Samsung's
the correct one.
In either
it
is
even
appears
demonstrated
the
second
element
of
judicial estoppel.
3.
Whether NVIDIA Has Established That Samsung Acted
With Bad Faith Or Intent To Mislead This Court
Even
if
NVIDIA
positions
before
estoppel
is
had
the
established
on
which
applicable
not
PTAB
here
that
Samsung
the
PTAB
because
took
relied,
NVIDIA
established the third element of judicial estoppel:
intent
contrary
judicial
has
not
bad faith or
to mislead.
NVIDIA emphasizes that it "repeatedly notified Samsung that
[Samsung]
had
taken
Samsung's
receipt
inconsistent
of
this
notice
factual
proves
positions,"
that
bad faith or with intent to mislead this Court.
5,
9-10).
However,
Samsung
and
that
acted
in
(Def.'s PSJ Mem.
NVIDIA has established at most that Samsung
knowingly took contradictory positions,
not
that Samsung acted
with intent to mislead the Court or with bad faith.'' NVIDIA also
^ Additionally, Samsung points out that parties "frequently raise
different
arguments
in
district
11
courts
than
they
do
in
PTAB
dropped
the
briefing.
At
"intent
to
mislead"
argument
from
its
reply
(Def.'s PSJ Reply 1-4).
the
hearing
on
this
motion,
NVIDIA's
counsel
that NVIDIA had no evidence of subjective bad faith,
that bad faith
could be
contradiction.
(Tr.
inferred from Samsung's
Dec.
1,
2015
Hr'g
conceded
but stated
act of
7:13-9:21).
knowing
The
Fourth
Circuit sometimes permits an inference of bad faith or intent to
mislead
the
court
where
a
party continues
contradictory positions which
to
"indicate that
assert
[party's]
was deliberately and not inadvertently taken." King,
197-98;
see
Comm'n,
2013)
No.
also,
e.g.,
4:12cv46,
(noting
that
Vanderheyden
2013 WL 30065,
judicial
v.
estoppel
is
(E.D.
position
159 F.3d at
Peninsula
at *12
factually
VA.
Airport
Jan.
2.,
commonly used when
a
debtor knows that he has a legal claim, fails to comply with the
statutory duty to disclose that
attempts
to
sue
on
the
courts infer bad faith,
basis
claim in bankruptcy,
of
however,
that
claim) .
In
and then
cases
where
the inconsistent positions tend
to be stark and factually obvious: a person is able to do a job
or is not able to do a job; a person knows of a legal claim or
does
not
inferred
know
of
because
a
legal
the
claim.
different
In
such
factual
cases,
bad
positions
faith
is
are
so
proceedings because the PTAB and district courts" have different
standards and purposes. (Pl.'s PSJ 0pp. 8-9).
12
obviously contradictory
that
the
party
could only be
asserting
them intending to mislead the court.
Such
an
inference
is
not
appropriate
in
this
Samsung's positions are not clearly inconsistent.
even if Samsung's positions were inconsistent,
case because
In this case,
they were not so
inconsistent that a reasonable person could not believe that the
positions were legally consistent.® In other words, Samsung could
plausibly and reasonably taken the positions
the
PTAB and
has
not
Court
this
Court
adequately
under
the
in good
proven
Fourth
bad
faith.
faith
Circuit's
or
rules
On
in question before
this
intent
for
record,
to
NVIDIA
mislead
judicial
the
estoppel,
even if Samsung's positions are factually inconsistent.
4. Conclusion on Judicial Estoppel
For the reasons stated above,
the Court finds that NVIDIA
has not carried its burden to show judicial estoppel. The Court,
exercising its discretion to grant equitable relief, declines to
apply judicial estoppel there.
^ The Court's own conclusion, supra, that the positions were not
legally
inconsistent
is
prima
facie
evidence
that
minds could, without bad faith or intend to mislead,
that Samsung's positions were legally consistent.
13
reasonable
conclude
B.
Whether
The
^602
Patent
Is
Invalid
For
Lack
Of
Written
Description
NVIDIA argues that,
from asserting a
if
judicial estoppel
position contrary to "the
disclose use of the
'602 technology
memory controller," then the
written
description,
buffers
in
devices)
any
'602 patent does not
(a data strobe buffer)
the
claims
(use
of
data
including memory devices
would exceed the scope of the written description
Mem.
10) .
established,
Because
Samsung's
inability
not
invalidate the patent
if
judicial
does
memory
written
estoppel
not
those
used
memory
controllers.
estoppel
has
(Def.'s
not
been
talce
of
does
to
make
a
not
position
would
how
memory
not
buffers
(Def.'s PSJ Mem.
in
11).
14
to
argues
how
the
to
the
carry
that
out
out
and then
context
of
in
a
the
the
the
carry
that
'602
buffers,
buffers
This argument
buffer
that
strobe
NVIDIA
teach
asserting
strobe
contend
teach
Instead,
from
data
used to make memory strobe
strobe
that
Samsung
use
not
does
to
lack of written description even
does
claimed.
description
method/process
the
NVIDIA
description
method/process
for
foreclosed
disclose
controller."
method/process
written
judicial
(data
this argument need not be addressed.
Moreover,
"'602
strobe
or controller
strobe buffers only in the context of memory devices).
PSJ
in a
'602 patent is invalid for lack of
because
context,
forecloses Samsung
'602
the
use
memory
is irrelevant.
The
written
description
describes
a
process
for
making
memory
strobe buffers,
and the claims claim a method for making memory
strobe buffers.
Samsung did not need to claim every possible use
for
those
memory
strobe
buffers
in
the
written
description.
Samsung correctly identifies the rule that:
although the specification often describes
very specific embodiments of the invention,
[the Federal Circuit has] repeatedly warned
against
confining
the
claims
to
those
embodiments .... In particular, [the Federal
Circuit
has]
expressly
rejected
the
contention that if a patent describes only a
single embodiment, the claims of the patent
must be construed as being limited to that
embodiment.
Phillips V. AWH Corp., 415 F.3d 1303, 1323 {Fed. Cir. 2005). ® So
long
as
the
written
description
enables
a
person
skill in the art to practice all the claims,
does
not
run
specifications,
art
would
claims.
to
the
ordinary
so long as a claim
purposes
stated
in
the
and so long as persons of ordinary skill in the
not
representations
description
counter
of
confine
depicted
should
not
the
in
claim
the
impose
terms
to
environments,
additional
the
the
limitations
exact
written
on
the
Id.
®NVIDIA mischaracterizes Samsung's source of law, characterizing
Samsung as relying on the Manual of Patent Examining Procedure.
{Def.'s PSJ Reply 5). Samsung does cite the manual, but its
argument ultimately rests on Phillips, which applies here.
15
LizardTech,
1336,
the
1345
(Fed.
contrary.
description
broader
at
only
one
^maintain
Earth Resources Mapping,
2005),
on which
LizardTech,
taught
1344
v.
Cir.
In
process
F.3d
Inc.
issue
but
recited
("The
method
updated
in
one
problem
for
is
because
NVIDIA
not
it
sums'
does
lacks
not
enable
the
of
of
the
argue
a
DWT
^602
that
the
424
is
the
did not
claims.
F.3d
not
teach the
LizardTech,
DWT,
424
provides
which
coefficients.
to
written
specification
seamless
That
is
is
to
the
Yet claim 21 is broader than claim
^maintain
that
the
that
creating
procedure recited by claim 1.
1
relies,
was
specific process,
one
the
NVIDIA
Inc.,
updated
Samsung's
claims
at
sums'
written
issue,
limitation.").
description
so
does
LizardTech
is
inapplicable.
Analogizing to Phillips,
Samsung has a patent for making a
lightbulb,
with adequate claims and written description.
said
NVIDIA
that
sticking
the
infringes
lightbulb
in
by
making
the
lightbulb,
and
a
flashlight.
Samsung's
lightbulb
patent would not be inadequate
for
failure
to mention
"and
It is
for
the
then
lack of written description
lightbulb may be
placed
in
a
flashlight."
Thus,
even
assuming
that
judicial
estoppel
should
apply,
the ^602 patent is not invalid for lack of written description.
16
V.
A.
PRE-SUIT DAMAGES
'675)
Direct and Contributory Infringement
NVIDIA originally challenged
damages
under
35
§
271(g)
(importation
14-15) .
271(c)
U.S.C.
U.S.C.
After
Judgment,
damages
Reply
('902 AND
§
271(b)
(contributory
of
NVIDIA
a
the
availability of
(induced
infringement),
infringement),
and
product-by-process).
filed
its
Motion
pre-trial
35
U.S.C.
(Def.'s
for
35
§
PSJ Mem.
Partial
Summary
Samsung amended its damages report to remove pre-suit
for
10) .
any violations of §
271(b)
In
in
its
memorandum
or §
271(c).
opposition
to
(Def.'s
this
PSJ
motion,
Samsung confirmed that it does not seek damages for induced or
contributory infringement.
(Pl.'s
PSJ Br.
21-22),
Hence,
that
aspect of NVIDIA's motion for partial summary judgment will be
granted.
B.
Infringement By Importation
Samsung has not, however, yielded on the issue of pre-trial
damages for importation of the product-by-process.
NVIDIA
argues
that
provision of 35 U.S.C.
it
is
§ 287(b),
from seelcing pre-trial damages
infringing
entitled
product-by-process
to
use
the
safe
harbor
which would preclude Samsung
for
under
NVIDIA's
§
271(g)
importation of an
prior
to
NVIDIA
receiving actual Icnowledge that the imported product-by-process
was created by an infringing process.
17
(Def.'s
PSJ Mem. 11-12).
The
parties
do
not
dispute
that
NVIDIA
received
Samsung filed this action on November 12,
2014.
notice
when
{Def.'s PSJ Mem.
11-12) .
Samsung
argues
that
because:
(1)
NVIDIA's
circumstances
process
only
is
entitled
to
pre-suit
damages
the "actual knowledge" standard is inapplicable to
patents;
(2)
party TSMC makes
the
it
because
NVIDIA's
it
ineligible
who
take
patents
direction
limitations of §287{b)(l),
infringers
the
for
§
287(b)
and/or
possession
or
(3)
of
§
a
in
question
control
of
are
third-
protection due
287(b)(2)
product
made
to
protects
with
a
patent process and NVIDIA never takes possession of the products
in question.
1.
Applicable Law: The § 287(b)
As a general matter,
less than a
Safe Harbor
patentees are entitled to damages not
reasonable royalty.
35 U.S.C.
§ 284.
Section 287,
however, places limitations on damages.
(1) An infringer under 271(g) shall be subject to all
provisions of this title relating to damages and
injunctions except to the extent those remedies are
modified by this
subsection or
...
the
Process
Patent
Amendments Act. The modifications of remedies provided
in this subsection shall not be available to any
person who -
(A) practiced the patented process;
(B)
owns
by,
the
process;
or
controls,
person
who
or
is
owned
practiced
or
the
controlled
patented
or
(C) had knowledge before the infringement that a
patented process was used to make the product the
18
importation,
use,
offer for sale,
or sale of
which constitutes the infringement.
(2) No remedies for infringement under section 271(g)
shall be available with respect to any product in the
possession of, or in transit to, the person subject to
liability under such section before that person had
notice of infringement with respect to that product.
The person subject to liability shall bear the burden
of proving any such possession or transit.
35 U.S.C.
§ 287(b).
2.
Argument
and
Application
of
the
§
287 (b)
Safe
Harbor
NVIDIA
complains
that
Samsung's
damages
claim
encompasses
sales of products manufactured by allegedly infringing processes
between
2009
and
November
received
(by
way
of
that
the
products
NVIDIA
Samsung's
^902 and
'675 patents.
states
that
contractor,
the
12,
service
2014,
in
this
imports
infringing
the
and
date
on
action)
actual
sells
allegedly
(Def.'s PSJ Mem.
products
which
are
NVIDIA
knowledge
violate
11-12). NVIDIA
manufactured
Taiwan Semiconductor Manufacturing Company
by
a
("TSMC").
(Def.'s PSJ Mem. 13). The parties agree that NVIDIA does not own
TSMC, or vice-versa.
NVIDIA
asserts,
control TSMC.
states
that
confidential
processes
to
(Def.'s
though
(Def.'s
TSMC
and
Samsung
PSJ Mem.
treats
its
discloses
customers,
PSJ Mem.
such
13;
disputes,
13;
"limited"
19
that
PSJ 0pp.
NVIDIA
Pl.'s PSJ 0pp.
fabrication
that
Pl.'s
NVIDIA did
not
does
not
11).
NVIDIA
as
highly
processes
information
11).
about
know
that
those
TSMC
practiced the claims of the
instant suit.
(Def.'s PSJ Mem.
NVIDIA
importing
it
argues
a
cannot
that,
13-14; Pl.'s PSJ 0pp.
because
it
has
be
held
of
§
exceptions
liable
287 (b)
laid
for
pre-notice
unless
out
NVIDIA
in
§
itself;
controls TSMC
or
(or vice versa) ;
falls
(B)
(C)
accused
under
§
damages
into
287(b)(1):
practiced the patented process
11-12).
been
product-made-by-infringing-process
protections
three
'675 patent until Samsung filed the
(A)
that
of
271(g),
under
one
of
that
the
the
NVIDIA
NVIDIA owns
or
that NVIDIA had knowledge
that the process infringed.
Samsung
Samsung
does
agrees
argue
287(b)(1)(B)
such
damages;
(2)
and
that
exceptions
that:
that
(1)
(A)
NVIDIA
NVIDIA
is
and
(C)
do
not
apply.
controls
TSMC
under
exempt
from
pre-suit
not
§
NVIDIA never took possession of the products
under § 287(b) (2),
so that NVIDIA is not exempt
from pre-suit
damages.
a.
Samsung Has
Pled Acts
Sufficient To Raise A
Material Dispute About NVIDIA's "Control" Of
TSMC,
And
For The §
Thus
About
287(b)
NVIDIA's
Eligibility
Safe Harbor
In defining the legal standard for "ownership or control,"
NVIDIA argues that "control" in the context of § 287 (b) (1) (B)'s
"own
or
interest
exception
control"
in
to
means
TSMC
apply.
(or
that
NVIDIA
vice-versa)
(Def.'s
PSJ
20
must
for
Mem.
have
the
16-17).
a
§
controlling
287(b)(1)(B)
NVIDIA
mostly
argues
that
ownership.
"control"
in
this
context
should
mean
corporate
(Def.'s PSJ Mem. 16).^
NVIDIA's corporate ownership interpretation of "control" in
the
context
of
superfluous.
the
That,
statute
of
1166,
against
1178,
185
render
is
unacceptable
course,
statutory construction.
Ct.
would
E.g.,
L.
Marx v.
Ed.
2d
Indeed,
surplusage).
an
the
Gen.
242
term
"own"
approach
Revenue Corp.,
(2013)
rules
the
of
{noting
133 S.
the
construction
to
canon
require
that each term of a statute be given effect if at all possible.
E.g.,
Lamie
1031,
157
surplusage
canons of
v.
U.S.
Tr.,
L.
Ed.
2d
is
important
540
1024
U.S.
(2004)
though
not
526,
536,
(noting
124
that
absolute).
statutory construction alone
S.
Ct.
canon
1023,
against
Anti-surplusage
teach that
"control"
is
different than "own."
' In its original briefing, NVIDIA pulled its definition for "own
or control" from the section of the U.S. Code dealing with the
liability of parent companies for sanctions violations. (Def.'s
PSJ Mem. 16 n. 3) (citing 22 U.S.C. § 8725(a)(2)). In its reply
brief,
parent
NVIDIA found a
corporation
controls'
its
Federal Circuit case which states that "a
clearly
subsidiaries."
'directly
(Def.'s
or
indirectly
owns
PSJ
Reply
(quoting
13)
or
Union Pac. Corp. v. United
1993)). The citation to the
slightly misleading because
than a patent case. More
simply
stands
for
necessarily own
and
ownership or control
the
States, 5 F.3d 523, 526 (Fed. Cir.
Federal Circuit, without context, is
Union Pacific is a tax case, rather
importantly, in context the quote
proposition that parent corporations
control
their
subsidiaries not
that
can only be established in situations of
complete corporate ownership/control.
21
Additionally,
the
oral
Patents
argument,
Amendments
ownership
and
unnecessary.
17-18}
as Samsung pointed out in its briefing and at
Act
(relying
Dec.
on
(June 23,
from
the
on S.
Rep.
resort
2015 Hr'g,
Rep.
of
on
the
to
Process
Process
meaning
other
33:13-34:17;
100-83,
the
of
statutes
Pl.'s PSJ 0pp.
Patents
Amendments
1987)}. The legislative history of the Act
is meant to "shelter only purchasers who are
in
[patented]
No.
1,
history
elaboration
making
manufacturer
protect themselves
using the
contains
S.
shows that § 287(b}
remote
legislative
control,
(Tr.
Act of 1987
the
and
contracts
at
not
with the
process."
100-83,
are
(Pl.'s
42).
in
the
position
party who
PSJ 0pp.
to
is
actually
17-18)
(relying
NVIDIA actually quotes the same
report for a similar proposition,
that "Mt]hose who are closely
connected with carrying out the process in the manner outlined'
cannot
PSJ
avail
Mem.
16)
themselves
(quoting
of
S.
the
§
Rep.
287(b)
100-83,
safe
at
harbor."
52).
The
(Def.'s
parties,
accordingly, both acknowledge that an importer which is "closely
connected"
to
the
party using
the
patented
process
cannot
use
the safe harbor provision.®
® NVIDIA reneges on this acknowledgement in its Reply, where it
argues
purely that
"[c]ontrol
in
the
statutory phrase
^own
or
control' requires the power to assume responsibility ... for the
decisions of the other company, whether by contract, and equity
position,
or
control
of
the
Reply 13) . As noted supra,
board
however,
22
of
directors."
(Def.'s
PSJ
this interpretation clearly
To the end of establishing an absence of close connection,
NVIDIA argues that "NVIDIA does not own or control TSMC ... NVIDIA
is one of hundreds of customers who rely upon TSMC."
Mem.
13) .
To establish
affidavits
in
which
"primary partner,"
"selects
exactly
close
NVIDIA
connection,
officials
Samsung
referred
(Def.'s PSJ
cites
to
several
TSMC
as
in which NVIDIA officials stated that
which
infringing
process
will
be
its
NVIDIA
used
to
manufacture its products," in which NVIDIA officials stated that
TSMC
always
refused
to
undertook
provide
NVIDIA's
suggestions
information
about
and
had
processing,
only
and
in
once
which
NVIDIA officials stated that TSMC shares design information with
NVIDIA.
v.
H.
for
(Pl.'s PSJ 0pp.
Lundbeck A/S,
the
favor
612 F.
proposition
sufficient
on
12-13). NVIDIA also cites Infosint,
Supp.
that
2d 402,
strategic
404-05
partnerships
indicia of "control" to prevent
the
control
(Def.'s PSJ Mem.
issue
at
(S.D.N.Y.
the
finding
summary
S.A.
2009)
provide
a
in NVIDIA's
judgment
stage.
18) .
Under the legal definition of "control" acknowledged by the
parties
-
connected"
that
or
is,
not
whether
"remote"
NVIDIA
-
and
Samsung
TSMC
has
were
shown
"closely
sufficient.
violates anti-surplusage canons of statutory interpretation and
cannot
stand.
23
affidavit-backed
NVIDIA
that
a
reasonable
jury
could
find
that
c o n t r o l l e d TSMC.
That
papers
facts
said,
provide
the
the
Court
is
correct
not
convinced
standard
for
that
§
the
parties'
287(b)(1)(B).
The
Federal Circuit's "direction and control" line of cases appears
more appropriate.
As the Federal Circuit recently summarized:
[f]or method claims ... a patent holder must
establish that an accused infringer performs
"all the steps of the claimed method, either
personally or through another acting under
his
direction
previously
standard
is
or
that
control..."
"the
satisfied
We
control
in
have
or
stated
direction
situations
where
the law would traditionally hold the accused
direct infringer vicariously liable for the
acts committed by another party that are
required
to
complete
performance
of
a
claimed method."
Aristocrat
Techs.
F.3d 1348,
1362
Australia
(Fed.
see also Muniauction,
(Fed.
Cir.
2008);
1373,
1379
(Fed.
Cir.
BMC,
Muniauction,
infringement,
where
2013)
v.
Int'l
Inc.
Game
Tech.,
709
(internal citations omitted);
Inc. v. Thomson Corp.,
BMC Res.,
Cir.
Pty Ltd.
v.
532 F.3d 1318, 1328
Paymentech,
L.P.,
498
F.3d
2007) . ® Other district courts have found
and
the
their progeny deal with
defendant
performs
part
divided
of
the
infringing method and a third party performs completes the
infringing method. Divided infringement is not directly akin to
importation. However, they are roughly analogous in that TSMC
performs part of the infringement (the process) and NVIDIA
performs part of the infringement (bringing the product-byprocess into the United States). Additionally, the statutes
providing liability for divided infringement and for importation
24
that "to raise a
fact
direction-or-control
third
parties
accordance
Inc.
V.
2008)
924,
with
to
standard,
perform
specific
Lipidlabs,
the alleged
steps
930-33
(N.D.
Inc.,
af f' d,
318
F.
111.
586
App'x
similar allegations
infringing
products."
(Pl.'s
583
F.
F.
here,
and
Ecast,
Patent
2d 1331,
(Fed.
Cir.
0pp.
will
12-13).
834
586 F.
1335
{S.D.
Samsung
in
Emtel,
(S.D.
Tex.
Supp.
2d
LLC
v.
Holdings,
2009)).
that
be
811,
cause
method
requirements."
Inc.,
Supp.
process
claimed
2d
Glob.
stating
infringer must
the
Supp.
v.
2008);
908
PSJ
of
instructions
(noting Rowe Int'l Corp.
Panthers BRHC LLC,
which
issue as to direct infringement under the
Fla.
has
2008)
made
NVIDIA "selects exactly
used
Under
to
a
manufacture
its
BMC/Muniauction-
derived standard of "control," Samsung has also shown sufficient
affidavit-backed facts from which a jury could find that NVIDIA
controlled TSMC's actions and is accordingly ineligible for the
§ 287(b)
safe harbor.
have the same general goal of not letting defendants escape
liability by having a third party do part of their dirty work.
(S. Rep. No. 100-83, at 42) . In any case, divided infringement
is much closer to this case than the definition for "control" on
which NVIDIA relies, which come from the federal statute on
liability of parent companies for sanctions violations and from
tax cases.
(Def.'s PSJ Mem. 16 n. 3)
(quoting 22 U.S.C. §
8725(a)(2); see also (Def.'s PSJ Reply 13) (quoting Union Pac.
Corp.,
5 F.3d at 526).
Moreover, at oral argument NVIDIA's attorney stated that
NVIDIA does not believe that "direction or control" "changes the
operative legal" concept behind "owns or controls." (Tr. Dec. 1,
2015 Hr'g, 66:15-19).
25
Because
a
reasonable
"controlled" TSMC,
the
issue
of
jury
could
find
that
NVIDIA
NVIDIA is not entitled to summary judgment on
pre-trial
connected"
argument
standard of
the
under
parties
either
Samsung Has
A
or
Shown Facts
Material
Issue
"Imported"
The
Of
the
the
"closely
"control."
b.
by
damages
BMC/Muniauction
Sufficient To Raise
Fact Over Whether NVIDIA
Product,
But
That
Is
NVIDIA's
failure
to
protected
class
of
Irrelevant
Samsung
qualify
as
infringers,
not
fusses
one
that
of
"[sjeparate
Section
from
287(b)'s
NVIDIA's motion independently fails because it does
establish
that
the
infringing
products
were
in
possession or in transit to it, as the statute requires."
its
(Pl.'s
PSJ Mem. 18). NVIDIA asserts that it had constructive possession
of the accused products when it stored them in certain overseas
third-party warehouses.
The Court,
shipping)
(Def.'s PSJ Reply 12).^°
however,
is
not
convinced that
products under § 287(b)(2)
safe harbor of § 287(b)(1).
Rather,
of
a
product-by-process
10
(or
is a prerequisite for the
§ 287(b)(1)
appear to be two independent safe harbors.
importers
possessing
absent
and § 287(b)(2)
§ 287(b)(1)
(A)
protects
practice,
(B)
All of NVIDIA's support for the "constructive possession"
theory comes from criminal cases (Def.'s PSJ Reply 12 & 12 n.
3) .
26
ownership
or
control,
importers
cannot
be
or
(C)
held
knowledge.
liable
for
§
287(b) (2)
damages
for
says
that
products
in
inventory or in transit at the time the importer acquires actual
knowledge.
the
Nothing
importer
about
must
§287(b)(2)
as
a
287(b)(1);
take
rather,
the
structure
physical
predicate
the
for
of
§
receipt
safe
provisions
287
of
the
harbor
are
suggests
that
items
status
alternate
under
under
paths
§
for
limiting importers' damages.
Samsung may be
receipt
of
correct
imported
irrelevant
because
(1)
that
NVIDIA does
products-by-process,
possession
under
not
but
§
take
physical
that
287(b)(2)
fact
is
not
is
a
prerequisite for the safe harbor of § 287(b)(1); and (2) Samsung
has raised a material issue of fact on control which precludes
granting summary judgment on the basis of §
apart from whether § 287 (b)(2)
287(b)(1),
wholly
is a prerequisite or a separate
safe harbor.
In
sum,
reasonable
Samsung
jury could
287 (b)(1)(B),
has
find
raised
that
facts
sufficient
that
NVIDIA controlled TSMC under
a
§
so that NVIDIA could be ineligible for the safe
harbor of § 287(b)(1).
Accordingly,
these genuine disputes
of
material fact preclude issuing partial summary judgment on the
issue of pre-suit damages
to the extent
case.
27
that
they are
in the
VI. DILIGENCE, REDUCTION, AND THE LEE APPLICATION
Issued patents may be
of
prior
art.
35
invalid due
U.S.C.
§
102.
to obviousness
When
a
in light
defendant
raises
invalidity due to obviousness in an infringement action based on
a particular piece of prior art,
a
plaintiff may assert that he
conceived of his
patented invention prior to
that
prior
particular
patented
invention
art,
and
effectively
eliminating
the conception of
antedating
the
prior
his
art
obviousness-inducing reference.
E.g.
Creative Compounds,
Starmark Labs.,
651
(Fed.
V.
Inc.,
as
C.R.
However,
exercised
Bard,
a
F.3d
1303,
1311
79
F.3d
1572,
plaintiff
reasonable
may
only
diligence
Cir.
1577
in
his
reducing
an
LLC v.
2011);
Mahurkar
Cir.
1996)."
(Fed.
antedate
own
patent
his
if
he
concept
to
practice in the critical period between the publication of the
alleged prior art and the plaintiff's reduction to practice. Id.
In its third invalidity contention, NVIDIA asserts that the
"Lee Application" is invalidating prior art with respect to the
^902 patent; Samsung asserts that it conceived the
*902 patent
before publication of the Lee Application and pursued the patent
with
reasonable
The
diligence
"reasonable
interferences,
until
reduction
diligence"
to
concept
but "[t]he Federal Circuit has
interference context'
([pre-AIA]
NVIDIA
originates
in
'borrowed from the
35 U.S.C. § 102(g)) to resolve
priority under 35 U.S.C. § 102(a)." (Def.'s
(relying on Mahurkar, 79 F.3d at 1577)).
28
practice.
PSJ Mem.
26 n.7)
asserts
that
evidence of
PSJ 0pp.
•
has
reasonable
22-30).
not
produced
diligence.
(Def.'s
legally
PSJ Mem.
'602 patent before March 22,
The Lee Application
March
sufficient
21-29;
Pl.'s
The parties agree that:
The inventor who assigned the patent
of the
•
Samsung
22,
1996.
is a
(Pl.'s
to Samsung conceived
1996.
piece of prior art published on
PSJ
Mem.
24;
Def.'s
PSJ
Mem.
24-
25) .
•
Samsung constructively reduced the
on June 28,
*902 patent to practice
1996, when it filed its own patent application
before the Korean patent authority ("KIPO").
(Pl.'s PSJ Mem.
27-28).
The parties disagree on
diligence"
and
corroborated
(2)
whether
reasonable
between March 22,
(1)
the requirements of "reasonable
Samsung
diligence
has
adequately
during
1996 and June 28,
the
1996,
proven
critical
and
period
so that Samsung is
entitled to antedate its conception prior to the Lee Application
(and thus remove the Lee Application as invalidating prior art).
(Def.'s PSJ Mem. 26-29; Pl.'s PSJ Mem. 27-30).
A.
Legal Standard For Reasonable Diligence
Reasonable
diligence
is
an
issue
Monsanto Co. v. Mycoqen Plant Sci.,
Inc.,
of
fact
for
the
jury.
261 F.3d 1356, 1367-68
(Fed. Cir. 2001). The party challenging validity must prove all
29
issues relating to the status of any asserted prior art by clear
and
convincing
challenging
evidence.
validity
Mahurkar,
must
also
79
F.3d
prove
Corroboration
is
reasonable diligence.
Cir.
Pryce v.
relying
inventor's
toward
reasonable
Mahurkar,
support
Symsek,
of
party
79 F.3d at
testimony
988 F.2d 1187,
regarding
1196
(Fed.
on
during
to
district
practice
the
court
and proof
critical
(relying on Illumina
(EDL),
two
cases,
asserts
that
reasonable diligence requires continuous activity
reduction
activity
05542
to
The
1993).
NVIDIA,
an
required
1576.
lack
diligence by clear and convincing evidence.
1578.
at
Inc.
v.
period.
of
specific details
(Def.'s
Complete Genomics
2013 WL 1282977,
at *7)
(N.D.
Cal.
PSJ
Mem.
Inc.,
No.
Mar.
on
26)
C-10-
26 2013);
Loral Fairchild Corp. v. Victor Co. of Japan, Ltd., 931 F. Supp.
1014,
1030
(E.D.N.Y.
1996)).
Returning
to
Federal
Circuit
precedent, NVIDIA asserts that a prosecuting attorney must prove
reasonable
diligence
with
records
which
show
"the exact
days
when activity specific to the patentee's application occurred."
(Def.'s
PSJ Mem.
26)
(relying on In re Enhanced Sec.
LLC, 739 F. 3d 1347, 1358
In particular,
867,
871
(C.C.P.A.
(Fed. Cir. 2014).
NVIDIA points to D'Amico v.
1965)
Research,
for
the
proposition
Koike,
that
347 F.2d
two
short
notes (that the prosecuting attorney considered and approved the
30
application on one occasion,
another)
in
reasonable
a
two
month
diligence.
and prepared the
critical
(Def.'s
D'Amico court actually gave
period
PSJ
formal
were
Mem.
insufficient
27).
trial courts a
papers
However,
a
ruling
number
of
must
circumstances
depend
such
on
a
as,
great
but
not
limited to,
complexity of the
invention,
length of the application,
detail of the
drawings,
experience,
workload
and
availability of the attorney,
availability
of the draftsman and the inventor during the
period
involved,
size
of
the
attorney's
staff, procedure and policy in reviewing the
application,
type and thoroughness of the
review,
number
of
people
involved
in
preparing
the
application
and
their
location, and the number of changes which
the subject application underwent.
Certainly, evidence as to all these factors
need not be of record; possibly evidence as
to only one or two would suffice in certain
cases.
However,
in the present appeal we
know essentially nothing about the handling
of
the
application during
the
two-month
period except that
(a)
Breen did in fact
"consider and approve" the application, and
(b) the other work, i.e., checking, placing
in final form,
and preparing the formal
papers,
was
done
sometime.
There
is
no
end
to the inferences which might be drawn from
the scanty record before us and we prefer
not
to
indulge
in
them,
but
we
cannot
overlook the fact that Koike's priority date
falls nearly midway in this two-month period
and
it
is
certainly
possible
that
all
of
D'Amico's activity took place during the
period prior to October 29, whereupon the
application lay idle for nearly one month
awaiting execution by the inventor. Be that
31
for
the
good deal of leeway
in determining whether a record showed reasonable diligence.
[S]uch
on
as
it may,
and the
the
that month is
the critical month
record contains no evidence,
weakest
sort,
whether
in
it
even of
anything
occurred.
D'Amico,
347 F.2d at 871.
prosecuting
patent
in
attorney
the
D'Amico did not
only
critical
logged
period,
two
but
lose only because his
entries
because
of
there
work
was
on
no
the
other
evidence of special circumstances.^^
Samsung contends that reasonable diligence does not require
a
party to work constantly on an invention or to drop all other
work.
(Pl.'s
That
is
365,
369
PSJ 0pp.
correct.
27)
Samsung
(C.C.P.A.
1957)
(citing Monsanto,
points
to
Rines
261
v.
F.3d at
Morgan,
1369).
250
F.2d
for the proposition that the diligence
determination must be made
on the
circumstances of each case,
and that "[i]t is not necessary that an inventor or his attorney
should drop all
other work
and concentrate
on
the particular
invention involved; and if the attorney has a reasonable backlog
of work which he takes up in chronological order and carries out
expeditiously, that is sufficient." (Pl.'s PSJ 0pp. 29)
on Rines,
(quoting
250 F,2d at 369). That is also correct.
NVIDIA also correctly notes that attorneys must provide dates
of activity to prove reasonable diligence in prosecution. In re
Enhanced
Sec.
Research,
LLC,
739
F.3d
1347,
1358
(Fed.
Cir.
2014). However, evidence of attorney diligence need not come
straight from the prosecuting attorney. In D'Amico, the court
considered logs of a designated recordkeeper. D'Amico, 347 F.2d
at
870.
32
Samsung's
argument
falters,
however,
where
Samsung
argues
that "courts have found reasonable diligence even when there are
gaps
of several months
0pp.
27)
1389
(C.C.P.A.
found
(relying
on
in the relevant
Rey-Bellet
1974)).
reasonable
This
is
diligence
v.
Enqelhardt,
not
when
activities."
strictly
there
(Def.'s
493
F.2d
true.
are
1380,
Courts
gaps
of
PSJ
have
several
months, but courts have not held that a gap of several months is
reasonable per se.
depends
on
the
As
in
Amico,
the reasonableness of the gap
circumstances.
For
instance,
in
Rey-Bellet,
several months of inactivity was reasonable because the inventor
needed to test his invention on a monkey,
short on monkeys.
347 F.2d at 870
require
Rey-Bellet,
493 F.2d.
to
drop
all
projects
prosecution, but refusing to decide,
per
se
and without
reasonable
prosecute a
certain
of
for
an
and
work
on
one
solely on the basis of that
other documentary
statement
inactivity
attorney
and,
in
of
may
circumstances.
documented
See also D'Amico,
evidence,
to
take
that
was
months
two
it
to
patent).
The better
months
1389.
(recognizing that reasonable diligence does not
attorneys
principle
and his employer was
the
law
be
is
that
reasonable,
However,
case
of
such
delay
a
period of
given
evidence
inactivity
by
the
must
of
be
prosecuting
attorney, activity must be documented with specific dates.
33
several
B.
Parties'
The
Assertions
question,
evidence
from
Of Fact
then,
which
a
is
whether
reasonable
Samsung
jury
admissible
find
could
has
reasonable
diligence during the critical period.
NVIDIA
asserts
that
reasonable diligence,
Samsung
points
to
during
entries
in
an
gaps
as
long as
Mem.
26-27).
in the
the
99
internal
a
(Def.'s
fact
no
facts
on
day
long
Samsung
argues
PSJ Mem.
26-29).
NVIDIA
that "[t]he only thing Samsung
critical
database,"
month between
NVIDIA
shown
such that no jury could find that Samsung
exercised reasonable diligence.
grounds is argument
has
the
that
the
three
period
and
that
entries.
Federal
Circuit
are
three
there
are
(Def.'s
PSJ
has
found
that the "reasonable diligence" standard was not met as a matter
of
law
in
cases
where
the
attorney
evinced in Samsung's three entries.
Samsung argues that
critical
period."
Samsung points to:
processing
in
1996;
(1)
(2)
much
more
work
than
(Def.'s PSJ Mem. 26-28).
"NVIDIA's motion ignores evidence that
[Samsung employees and attorneys]
the
did
(Pl.'s
all worked diligently during
PSJ
0pp.
28).
In
particular,
the high volume of patents Samsung was
the
diligence
of
in-house
counsel
passing the patent off to outside counsel for prosecution;
in
(3)
the high volume of patents the outside counsel was processing in
1996;
(4)
the fact
that outside counsel nevertheless expedited
34
the
prosecution;
processing
and
and
finalizing
by outside counsel.
evidence relies on
in
Samsung's
(5)
the
(Pl.'s
(1)
Samsung's
quick
application
PSJ 0pp.
turn-around
once
28-30).
it
was
in
1996,
and
returned
Samsung's diligence
the testimony of Sung Pil Kim,
IP department
(2)
a
a manager
printout
from a
Samsung database showing activity on the patent on April 3,
17, and May 22, 1996.
In sum,
in
May
(Def.'s PSJ Reply 16-17).
Samsung has made out a
jury issue on the issue of
reasonable diligence.
NVIDIA's reply does not establish otherwise.
argues
that
lack
testimony
counsel
means that there is "no evidence of attorney diligence."
(Def.'s
However,
is not necessary.
from
Samsung's
NVIDIA
outside
PSJ Reply 16) .
of
First,
evidence from the prosecuting attorney
See D'Amico,
347 F.2d at 870
(considering a
draftsman recordkeeper's time logs as evidence).
Second,
database
due
NVIDIA also asserts that the Kim testimony and the
printout
diligence
Specifically,
are
insufficient
under
D'Amico.
NVIDIA attacks
as
a
matter of
(Def.'s
Kim's
PSJ
law
Reply
testimony because
to
show
16-17).
Kim does
not have specific recollection about what specific work was done
on
what
(Def.'s
bolstered
specific
PSJ
by
Reply
the
days,
and
16).
But
database,
admitted
Kim's
which
35
that
lack
NVIDIA
he
of
was
guessing.
recollection
acknowledges
is
does
provide
specific
dates.
(Def.'s
PSJ
Reply
17).
NVIDIA
then
attacks the database for failing to provide specific detail,
for having gaps as
PSJ
Reply
17).
long as one month between activity.
As
to
the
first,
the
short
and
(Def.'s
entries
in
the
database are bolstered by Kim's recollections. As to the second,
it
is
true
that
insufficient
for
in
D' Amico
activity
spaced
diligence.
reasonable
logs
But,
in
apart
D'Amico,
were
there
was no evidence of heavy workload or any of the "great number of
circumstances"
347
F.2d
at
which
871.
provides
a
counsel
were
impact
By
general
a
reasonableness
contrast,
picture
pushing
in
that
this
both
themselves
quantities of patent applications.
finding.
D'Amico,
Kim's
testimony
case
Samsung
to
put
and the
out
the
database
would
reasonable diligence.
dates
and
a
picture
individually
Together,
of
the
substantial
(Pl.'s PSJ 0pp. 28). That is
enough to distinguish this case from D'Amico.
and
outside
be
however,
Kim's testimony
insufficient
to
show
they provide concrete
circumstances
at
Samsung
and
its
outside counsel which indicate that a reasonable jury could find
reasonable
diligence.
corroborate
each
requirement.
Pryce,
Third,
inferences
other,
NVIDIA
in
the
Additionally,
fulfilling
Kim
the
and
the
Pryce
database
corroboration
988 F.2d at 1196.
argues
non-moving
that,
party's
36
even
favor,
making
the
reasonable
Court
cannot
deny
summary
competent;
judgment
(2)
because:
about
testimony
(1)
see
(3)
evidence
is
the
not
is
dates
upon
Kim's testimony is not
which
corroborated.
work
was
(Def.'s
not
PSJ
done;
Mem.
specific
and
20).
(4)
his
However:
the evidence need not be given by the prosecuting attorney,
D' Ami CO;
(2)
NVIDIA
fails
to
present
prosecuting attorneys must be named;
the necessary dates;
the
the
Kim's testimony is not specific enough about the
persons who performed work;
enough
(1)
database.
favor,
there
and
Drawing
is
a
(4)
all
(3)
a
case
saying
the
the database provides
Kim's testimony is corroborated by
reasonable
genuine dispute
inferences
of material
in
fact,
Samsung's
so
that a
reasonable jury could find that Samsung and its outside counsel
exercised
reasonable
diligence
during
the
critical
period.
Thus, NVIDIA is not entitled to partial summary judgment on this
issue.
Finally,
at
oral
argument
Samsung
asserted,
and
NVIDIA
conceded, that most of the cases NVIDIA relies upon were largely
not
decided
the
facts
at
had
summary
been
2015 Hr'g, 54:13-18,
Samsung
that
a
judgment,
presented
to
but,
the
rather,
were
factfinder.
made
(Tr.
after
Dec.
1,
62:6-18, 64:19-65:6). The Court agrees with
fact-intensive
inquiry
such
as
reasonable
diligence is best evaluated for legal sufficiency after all the
evidence has been presented.
37
CONCLUSION
For
SUMMARY
the
foregoing
JUDGMENT
{Docket
unopposed
sub-issue
all
issues,
other
(Docket No.
294)
reasons,
of
§
No.
294)
287(b)
NVIDIA's
NVIDIA's
will
and
MOTION
(c)
FOR
MOTION
be
partially
pre-trial
PARTIAL
FOR
on
damages.
SUMMARY
has been denied by previous order
PARTIAL
is
(Docket No.
so ORDERED.
/s/
Robert E.
Payne
Senior United States District Judge
Richmond, Virginia
Date:
December 16,
2015
38
On
JUDGMENT
586) .
It
the
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