WNS Holdings, LLC et al v. United Parcel Service, Inc.

Filing 235

ORDER granting 120 Defendant's Motion for Summary Judgment of non-infringement; dismissing without prejudice defendant's counterclaim asserting invalidity. Signed by Chief Judge Barbara B. Crabb on 7/14/2009. (llj)

IN THE UNITED STATES DISTRICT COURT FO R THE WESTERN DISTRICT OF WISCONSIN --------------------------------------------W N S HOLDINGS, LLC, OPINION AND ORDER Plaintiff, 0 8 - cv -2 7 5 - b b c v. U N IT ED PARCEL SERVICE, INC., D efendan t. --------------------------------------------T h is is a patent infringement suit in which plaintiffs WNS Holdings, LLC, Intelligent T echno logies International, Inc. and Mark Alan Eberwine contended that defendant United Parcel Service, Inc. uses technology on its aircraft that infringes several of plaintiffs' patents. O n March 13, 2009, I granted the parties' joint motion to dismiss several of plaintiffs' claim s and defendant's counterclaims, dkt. #92, trimming the case from a three-party, fivepatent case to a two-party, two-patent case. The dismissed claims and counterclaims were the only ones relating to plaintiffs Intelligent Technologies International, Inc. and Mark Alan E berw i n e, so I have deleted their names from the case caption. The remaining claims and counterclaim s relate to claim 7 of plaintiff WNS's United States Patent No. 5,351,194 (the

1

`1 9 4 patent) and claim 1 of plaintiff WNS's United States Patent No. 6,314,366 (the `366 p aten t). Jurisdiction is present. 28 U.S.C. §§ 1331 and 1338. T h e case is before the court on defendant's motion for summary judgment on its noninfringem ent, invalidity, laches and estoppel counterclaims and defenses. I conclude that plaintiff has failed to adduce sufficient proof to allow a reasonable jury to find that the equipm ent used in defendant's aircraft infringes either of plaintiff's patents and that d efen dan t is entitled to summary judgment on plaintiff's infringement claims. It is not necessary to reach defendant's other counterclaims or defenses. Also before the court are the parties' disputes relating to evidence supporting their pro po sed findings of fact and plaintiff's motion to file a supplemental response to d efen dan t's motion for summary judgment, dkt. #166. I will address these evidentiary and pro cedural matters before discussing defendant's motion for summary judgment.

A. Evidentiary Disputes I n its response to defendant's proposed finding of fact, dkt. #137, plaintiff objects to many of defendant's proposed findings of fact on the ground that the facts are supported by expert testimony from witnesses not designated as experts. Specifically, plaintiff contends th at the declaration and deposition testimony of defendant's witness Greg Kuehl contains expert testimony but Kuehl was never named or qualified as an expert and thus Kuehl's

2

testim o n y violates the court's preliminary pretrial conference order and Fed. R. Evid. 701. Acco rding to the preliminary pretrial conference order the parties were required to disclose all expert witnesses in accordance with Fed. R. Civ. P. 26(a)(2)(A), (B) and (C) by F eb ru ary 9, 2009 for the proponent and by March 9, 2009 for the respondent. Dkt. #17 at 3. The order specified that "[f]ailure to comply with these deadlines and procedures could resu lt in the court striking the testimony of a party's expert pursuant to Rule 37." Id. Rule 37 states that a failure to disclose an expert or supplement his testimony prevents the party p ro p osing the testimony from using "that information or witness to supply evidence on a m otio n, at a hearing, or at a trial, unless the failure was substantially justified or is harmless." D efendant did not disclose Kuehl as an expert witness and does not contend that its failure to disclose Kuehl is substantially justified or harmless. Thus, the issue is whether Kuehl's testim ony is correctly characterized as lay or expert testimony. U nd er Fed. R. Evid. 602, "A witness may not testify to a matter unless evidence is intro duced sufficient to support a finding that the witness has personal knowledge of the m atter." (Emphasis added.) Further, under Rule 701, a lay witness may testify about his op inio ns or inferences that are: (a) rationally based on the perception of the witness, (b) helpful to a clear u nd erstan din g of the witness' testimony or the determination of a fact in issue, and (c) not based on scientific, technical, or other specialized knowledge within the scope o f Rule 702.

3

The addition of subsection (c) to Rule 701 was intended to "eliminate the risk that the relia bility requirements set forth in Rule 702 [would] be evaded through the simple expedient of proffering an expert in lay witness clothing." Fed. R. Evid. 701, advisory co m m ittee note (2000). The relevant distinction is between expert and lay testimony, not expert and lay witnesses. Id. In other words, "it is possible for the same witness to provide both lay and expert testimony in a single case." Id. Plaintiff contends that much of Kuehl's testimony violates Rule 701 because it is based on technical or other specialized knowledge as evidenced by the fact that "[h]e rep eated ly refers to the functioning and interrelation of highly sophisticated pieces of avionics equipment[.]" Plt.'s Resp. Br., dkt. #136, at 10. Defendant contends that the mere fact that Kuehl's testimony is of a "technical nature" does not transform into expert testim o n y his factual testimony about what equipment is found on defendant's aircraft and ho w that equipment works, information that defendant contends is based on Kuehl's p erso n al knowledge and observations. Def.'s Reply Br., dkt. #163, at 32. T h e Court of Appeals for the Seventh Circuit has provided guidance on distinguishing betw een lay and expert testimony: Lay opinion testimony most often takes the form of a summary of first-hand sensory observations. The opinion provides the jury with a more complete picture than w o u ld be provided by a recitation of each component fact. Lay opinion testimony is admissible only to help the jury or the court to understand the fact about which the w i tn ess is testifying and not to provide specialized explanations or interpretations

4

that an untrained layman could not make if perceiving the same acts or events. Exp ert opinion, by contrast, need not be based on first-hand knowledge of the facts of the case. It brings to an appraisal of those facts a scientific, technological or other specialized knowledge that the lay person cannot be expected to possess. U n ited States v. Conn, 297 F.3d 548, 553-54 (7th Cir. 2002) (internal quotations and citation s omitted). (I note that the law of the Court of Appeals for the Seventh Circuit applies with respect to determining whether the testimony in this patent case is lay or expert because the question concerns a procedural issue not unique to patent law. Micro Chemical, Inc. v. Lextron, Inc., 317 F.3d 1387, 1390-91 (Fed. Cir. 2003).) Testimony is expert in nature when it is the type that "could have been offered by any individual with specialized kn ow ledge of the [relevant topic]." Conn, 297 F.3d at 555 (emphasis added). T h ere is no doubt that some of Kuehl's testimony in his declaration and deposition is expert testimony. For example, Kuehl's testimony about what Automatic Dependent S u rveillan ce-B r oad cast (ADS-B) is and how defendant's Traffic Alert and Collision A vo id an ce System II (TCAS II) transmit information is expert testimony. E.g., dkt. #123, ¶¶ 5, 6, 48 & 49. Such testimony could be offered by any individual with specialized k no w led ge of Automatic Dependent Surveillance-Broadcast or Traffic Alert and Collision Av oida nce System II. Further, it should come as no surprise that testimony about how equ ipm ent works generally requires a foundation of specialized knowledge to produce exp lan atio n s or interpretations that an untrained layman could not reach from perceiving

5

the same equipment in use. It would not be possible for an untrained layman to observe d efen dan t's Traffic Alert and Collision Avoidance System II in use and know how Resolution Co ordination Messages are transmitted. Instead, it is Kuehl's specialized knowledge of the equ ipm ent that permits him to explain the message transmission process used by defendant's aircraft. A lay person cannot be expected to possess Kuehl's specialized knowledge about avio n ics equipment. Thus, the portions of Kuehl's testimony explaining how equipment found on defendant's aircraft works is expert testimony and cannot be used to support defendan t's proposed findings of fact because defendant never disclosed Kuehl as an expert. I will disregard proposed facts supported by testimony by Kuehl to which plaintiff has o b je c t ed . Nonetheless, there are portions of Kuehl's testimony that cannot be properly characterized as expert testimony. Kuehl's testimony about what equipment and avionic system s are found on defendant's different aircraft arises solely from his personal, first-hand sen so ry observations obtained from installing that equipment and those systems. For

exam p le, Kuehl's testimony that "[a]ll UPS aircraft operated in the United States implement A D S -B functionality[,]" and that "ADS-B is a functionality that requires multiple pieces of eq uip m e n t for performance" is lay testimony about the equipment and systems found on defendant's aircraft. He he is not explaining how the equipment or system works but only w hat the equipment is and what makes up the system. Therefore, Kuehl's testimony about

6

w hat equipment and avionic systems are found on defendant's aircraft is admissible lay testim ony under Rules 602 and 701 and will not be disregarded. I will apply the same layexpert distinction in considering defendant's proposed findings of fact that rely on other w i t n e s s e s. N ext, plaintiff objects to the proffered expert reports on non-infringement and inva lidity of defendant's expert, William Cotton. Plaintiff contends that Cotton fails to qualify as an expert under Fed. R. Evid. 702 because "he lacks the knowledge of critical p aten t law standards." Plt.'s Resp. Br., dkt. #136, at 5. Defendant is not offering Cotton as an expert in patent law, but in avionics. He is in no position to give an ultimate opinion ab ou t invalidity or infringement. Even if he were, such an opinion would be of no use in any event. Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1277-78 (Fed. Cir. 20 04 ) (expert's unsupported conclusion on ultimate issue of infringement is insufficient to raise genuine issue of material fact). What matters is the expert's testimony about how the device works or what makes the patented invention obvious. Plaintiff' s concern about Cotton's reliance on defendant's attorneys to supply him w ith the proper patent law standards is misplaced. Under Fed. R. Civ. P. 26(a)(2)(B), cou nsel are not precluded "from providing assistance to experts in preparing the [expert] reports, and indeed, . . . this assistance may be needed." Fed. R. Civ. P. 26(a)(2)(B) advisory com m ittee note (1993). Defendant's attorneys provided Cotton the relevant legal standards

7

but it does not follow that Cotton's ultimate opinions were merely a parroting of the attorneys' arguments. Plaintiff's challenges to Cotton's lack of expertise in patent law do not undermine C otton 's qualifications and testimony as an avionics expert. His testimony is helpful with respect to understanding the avionics equipment and systems at issue as well as avionics in general. Although Cotton makes several statements about whether the patent is invalid, ob viou s or infringed, the statements do not support exclusion of his expert reports altogether. Any conclusory statements will be disregarded. This same principle applies to an y expert opinion testimony regarding invalidity, obviousness or infringement. Defendant objects to the declarations from several of plaintiff's experts that contain statem en ts or opinions that were alterations of those found in the experts' initial reports and no t disclosed in supplemental reports. The court's preliminary pretrial conference order requires supplementation of expert reports in writing, "served no later than five calendar d ays before the expert's deposition." Dkt. #17 at 3. Although some of the declarations co n tain supplemental opinions, plaintiff never notified defendant of the supplementation and defendant never had an opportunity to depose the experts about the supplemental opinions. For example, plaintiff's expert, Dr. James Knox, stated in his initial expert report th at a "controller" "is a standard term in the art and is known to refer to any piece of equipm ent which serves a control function." Knox Exp. Rep., dkt. #124-14, at 20.

8

H o w e ver, in a declaration submitted with plaintiff's response to defendant's motion for sum m ary judgment, Knox added that a "controller" "is known to refer to any piece or pieces of electronic circuitry or equipment which serves a control function." Knox Decl., dkt. # 14 0, at 32 ¶152 (underlining added). Because defendant did not have an opportunity to depose plaintiff's experts regarding any supplementation of their opinions, I will disregard any proposed facts supported by these supplementations to which defendant has objected.

B . Plaintiff's Motion for Leave to File a Supplemental Response At the close of briefing on defendant's motion for summary judgment, plaintiff filed a motion to submit supplemental responses to defendant's motion. Dkt. #166. Plaintiff con tends that the court should consider its supplemental filings because they address relevan t, newly-discovered evidence that was not produced by defendant until May 5, 2009. Plaintiff contends that the videos show ADS-B systems on a cockpit in one of defendant's aircra f t, supporting its contention that defendant's aircraft use Automatic Dependent Surveillance-Broadcast movement and location information to generate evasive maneuvers for the aircraft. The motion will be denied as untimely. Plaintiff alleges in its motion that it was unaware of the flight test video evidence until receipt of the videos on May 5, 2009. However, plaintiff concedes in its reply brief, dkt. # 1 7 3 , that it was made aware of the videos on January 28, 2009 during the deposition of

9

defendan t's employee, James Walton. Although plaintiff concedes that its attorney asked for the videos on January 28, it contends that it was prevented from determining whether it had the videos at the time because defendant's attorney said that he believed that the videos had been produced in response to July 15, 2008 discovery requests. Plaintiff

com plains that as of March 11, 2009, defendant had produced 290,299 pages of documents an d "some" videos, suggesting that the large amount of discovery received from defendant in response to the July 15 discovery requests made it difficult to determine whether it in fact had the relevant videos. Dkt. #173 at 3. Plaintiff should not complain that it was

prejudiced by having to evaluate a large amount of discovery in a short time, as it might have an ticip ated when litigating in a forum it chose for its speed. Plt.'s Resp. Br. to Def.'s Mtn. to Transfer, dkt. #27, at 27-29. The overall amount of discovery documents is irrelevant. A ll that matters is how many videos were produced. Plaintiff does not explain why it would have been difficult to look though "some" videos to determine whether the relevant ones had been produced. I f plaintiff believed the videos to be important, it should have put in the effort to insure it had them and should have sought a motion to compel if they were withheld when it discovered their absence. The court's preliminary pretrial conference order is clear: P arties are to undertake discovery in a manner that allows them to make or respond to dispositive motions within the scheduled deadlines. The fact that the general d isco very deadline cutoff . . . occurs after the deadlines for filing and briefing

10

d isp o sitive motions is not a ground for requesting an extension of the motion and briefing deadlines. .... T his court also expects the parties to file discovery motions promptly if self-help fails. Parties who fail to do so may not seek to change the schedule on the ground that discovery proceeded too slowly to meet the deadlines set in this order. D kt. #17 at 4 & 6. Plaintiff became aware of the existence of the videos in late January 20 09 , dispositive motions were not due until the end of March 2009 and its response to defendan t's motion for summary judgment was not due until the end of April 2009. In other words, it had approximately three months in which to seek the production of the vid eo s or file a motion to compel. It did not pursue the issue until after the completion of briefing on defendant's summary judgment motion. Plaintiff's motion to file a supplemental respo nse to defendant's summary judgment submissions will be denied as untimely. Having sorted through the parties' evidentiary disputes and taking them into account in making findings of fact, I find that the following facts are undisputed and material.

U N D IS PU T ED FACTS A. Patents in Suit In 2006, plaintiff WNS Holdings, Inc. was assigned the rights to the `194 and `366 patents by Worldwide Notification Systems, Inc., a related Georgia company.

11

1 . The `194 patent T h e `194 patent is entitled "Apparatus and Method for Closing Flight Plans and L ocating Aircraft." Only claim 1 and claim 7, which is dependant from Claim 1, are at issue. C laim 1 states: 1. An apparatus for monitoring a status and location of an aircraft, com prising: a receiver attached to an aircraft for receiving a positioning signal from each of a plurality of transmitters located at separate known locations; a switch located on the aircraft and indicating a status of the aircraft; a controller operatively connected to the receiver and the switch for determining the location of the aircraft based upon the positioning signals, said controller detecting the status of the aircraft by sensing the switch; a communicator operatively connected to the controller for communicating a signal to the air traffic control center to report the status and location of the aircraft in response to the switch. `19 4 pat., col. 7, lns. 25-40. Claim 7 states: 7. The apparatus of claim 1 wherein said switch comprises an automatic sw i tch operatively connected to the aircraft landing gear for automatically indicating that the aircraft is landing. Id . at col. 7, lns. 61-64.

2 . The `366 patent T he `366 patent is entitled "Satellite Based Collision Avoidance System." Only claim 1 is at issue. It states:

12

1. A method for automatically coordinating a vehicle collision avoidance m an euver between vehicles comprising the steps of: establishin g a data link between a first and second vehicle; receiving and transmitting position and movement information for said vehicles between said vehicles. generating an onboard evasive maneuver for said first vehicle; sy nch ro niz in g the transmission of said evasive maneuver to said second vehicle through said data link; tran sm ittin g said evasive maneuver from said first vehicle to said second vehicle through said data link; and displaying on a display device the evasive maneuver of said first vehicle. `3 6 6 pat., col. 24, lns. 27-41.

B . Defendant's Airline Operations As a package delivery company, defendant United Parcel Service has its own aircraft o peratio ns to transfer packages around the world. Defendant operates six different models of aircraft: Airbus 300, Boeing 747, 757 and 767, Douglas DC-8 and McDonnell-Douglas M D -11 s. Defendant's entire fleet consists of 228 aircraft currently in service. A ll of defendant's aircraft operating in the United States implement ADS-B function ality. The term Automatic Dependent Surveillance-Broadcast or ADS-B refers to a cooperative surveillance system that uses satellite technology, avionics equipment and a gro un d infrastructure to transmit flight information from aircraft to air traffic control q uick ly and accurately. ADS-B functionality can be split into two types: ADS-B In and

13

A D S -B Out. A vehicle that has ADS-B In capability has the ability to receive ADS-B info rm ation broadcast from another source, which enhances the pilot's situational awareness of other nearby aircraft. A vehicle that has ADS-B Out capability has the ability to broadcast AD S -B information. An ADS-B Out capable aircraft may not be ADS-B In capable. D efendant began installing ADS-B Out in all its aircraft in 2000. In 2001, it began equ ippin g only its Boeing 757 and 767 aircraft with ADS-B In. During that same time, defendant was working to implement ADS-B-related solutions in its various aircraft. The w ork included efforts to correlate certain ADS-B and Traffic Alert and Collision Avoidance S ystem (TCAS) display data in its aircraft's cockpits. ADS-B functionality is not embodied in a single piece of equipment on defendant's aircraft. Such functionality requires multiple pieces of equipment. ADS-B messages include various pieces of information about the plane, in clu din g latitude, longitude, altitude, speed, identification and time information. D efenda nt's aircraft use two primary pieces of equipment for implementing ADS-B O ut: Global Positioning System receivers and Mode-S Transponders. Defendant's various aircraft use different types of GPS receivers and transponders depending on the aircraft. Each aircraft has one or more GPS receivers. For example, defendant's Boeing 757 aircraft use Garmin GPS receivers contained in the Garmin Link and Display Processor Unit. H o w e v e r , some of defendant's Boeing 767 aircraft are equipped with Garmin Link and D isplay Processor Units, but do not use the GPS receiver contained in the Unit. Instead,

14

th ose 767s use separate GPS receivers referred to as multi-mode receivers. defendant's aircraft contains a Mode-S Transponder.

Each of

Alt h o u g h all defendant's aircraft implement ADS-B Out, only some of its aircraft im p le m e n t ADS-B In. Specifically, 75 of defendant's 757s and 32 of its 767s implement A D S -B In. Defendant's Boeing 757 and 767 aircraft implement ADS-B In using one of two configurations that permit implementing ADS-B In in combination with the Traffic Alert and Collision Avoidance System. (TCAS is a system to provide an early alert to pilots of an im pen ding collision with an aural alert and a display of the location of the threat aircraft). The "SafeRoute" configuration uses an ACSS 3000 series surveillance processor to receive an d process ADS-B In messages and an Electronic Flight Bag to display ADS-B information in the cockpit. This configuration also uses a separate AT 2000 display unit to display traffic data. The Link and Display Processor Unit configuration uses a Garmin Link and Display Pro cessor Unit to receive and process ADS-B In messages and an AT 2000 display unit to display traffic data. Six of defendant's Boeing 757 aircraft use the SafeRoute configuration and 69 of its 7 5 7 s use the Link and Display Processor Unit configuration. Five of defendant's Boeing 767 aircraft use the SafeRoute configuration and 27 use the Link and Display Processor Unit con figuration . All of defendant's Boeing 757 and 767 aircraft use the following equipment: G PS receivers; ACSS Mode-S Transponders; AT 2000 display units for displaying traffic

15

information; and two Vertical Speed Indicator Resolution Advisory displays on which TCASproduced Resolution Advisories are displayed. All of defendant's aircraft include various switches and sensors that determine when w eight is put on the aircraft's wheels. These are referred to generally as weight-on-wheels sw itches or sensors. These weight-on-wheel switches are part of the air/ground relay system o n an aircraft that transmits ADS-B position report messages with respect to whether the aircraft is in the air or on the ground. When the weight-on-wheels switch is in the open m od e, it identifies the aircraft as being in the air and when the switch is in closed mode it identifies the aircraft as being on the ground. Although the ADS-B position report message is sent periodically as a function of time regardless of the position of the switch, the content of the message changes depending on whether the weight-on-wheels switch is open or closed. D efendant has implemented equipment performing TCAS II software version 7 in all of its aircraft. TCAS II not only provides an early alert of an impending collision but it also p ro vid es evasive maneuver guidance to avoid an impending threat. Defendant's Boeing 757 an d 767 aircraft are equipped with one of two TCAS Computer Units. Defendant's 757s an d 767s that use the Link and Display Processor Unit configuration use a TCAS 2000 com puter unit. Defendant's 757s and 767s that use the SafeRoute configuration use a T C AS 3000 computer unit. The TCAS II devices on defendant's aircraft send interrogations, listen for replies and

16

use radar timing principles in order to track other aircraft, determine which aircraft might co n stitu te collision threats and generate evasive maneuvers to avoid such threats. The TCAS II devices do not use ADS-B position and movement information to generate evasive m an euvers. Instead, the devices repeatedly transmit interrogations and receive repeated replies that establish the replying aircraft's position in space. The replies contain the replying aircraft's 24-bit ICAO address and present altitude but do not contain the aircraft's latitude or longitude. The TCAS II devices also transmit and receive Resolution Coordination Messages and R e p li e s . A Resolution Coordination Message is transmitted when an aircraft's TCAS

d eterm in es that there is a resolution advisory, that is, that another aircraft poses a collision threat. The message is transmitted at a rate of once per second, as opposed to every eight to ten seconds as done during the normal broadcast interrogation phase, as long as the other aircraft remains a threat. The message contains a vertical resolution advisory complement, w hich tells the threatening aircraft what not to do, and it requests a reply from the threatening aircraft to confirm receipt of the message. The messages are transmitted over the same 1030/1090 MHz channels used for surveillance interrogations and replies. If the initiating aircraft does not receive a reply message, it will re-interrogate or re-transmit the R e so lu tio n Coordination Message multiple times. In other words, the message is sent repeatedly until it is received by the threatening aircraft as confirmed by a reply.

17

T o help avoid interference in messaging, TCAS II uses selective addressing of aircraft an d signal transmission/processing techniques such as sidelobe suppression and use of both direction al and omnidirectional antennas. Further, messages may be "jittered," which

invo lves random increases and decreases in the time between the retransmission of messages. Although there is a method to the timing and manner in which these messages are transm itted, there is no coordination among aircraft regarding the transmissions, that is, the transm issions are asynchronous.

O PIN IO N A. Infringement Analysis "`Sum m ary judgment on the issue of infringement is proper when no reasonable jury co uld find that every limitation recited in a properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents.'" U.S. Philips Co rp. v. Iwasaki Elec. Co., 505 F.3d 1371, 1374-1375 (Fed. Cir. 2007) (quoting PC C on necto r Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1364 (Fed. Cir. 2005)). Patent infringement analysis involves two steps. First, the patent claims must be interpreted or construed to determine their meaning and scope. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995). Second, the properly construed claims are

com pared to the process or device accused of infringing. Id.

18

W h e n construing claims, the starting point is the so-called intrinsic evidence: the claim s themselves, the patent specification and the prosecution history. Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002). Examination of the claim s' language is the starting point for the well established process of claim construction. "Claim construction must adhere carefully to the precise language of the claims that the p aten t [examiner] has allowed." Ardisam, Inc. v. Ameristep, Inc., 336 F. Supp. 2d 867, 879 (W .D . Wis. 2004) (citing Autogiro Co. of America v. United States, 384 F.2d 391, 396 (Ct. C l. 1967)). The language is given its ordinary meaning as it would be understood by one of o r d in ary skill in the relevant art, given its context and the other patent claims. Rexnord C orp . v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). Moreover, district courts m ust remain aware that "[t]he patent applicant may not have used words consistent with the diction ar y definition because an applicant can act as his or her own lexicographer or may disavo w or disclaim aspects of a definition `by using words or expression of manifest e xc lu sio n or restriction, representing a clear disavowal of claim scope.'" Ardisam, 336 F. S u pp . 2d at 879-80 (quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004)). This initial construction is then considered in light of the specification to determine w hether the inventor expressed a different meaning for the language, whether the preferred em bo dim ent is consistent with the initial interpretation and whether the inventor specifically

19

d isclaim ed certain subject matter.

Rexnord, 274 F.3d at 1342-43.

The specification

co n tain s a written description of the invention that is meant to help explain the invention an d possibly define claim terms, Markman, 52 F.3d at 979, but as a general rule, "limitations fro m the specification are not to be read into the claims." Golight, 355 F.3d at 1331. Finally, the interpretation is examined for consistency with the patent's prosecution history an d any disclaimers made therein. Rexnord, 274 F.3d at 1343. Last, a court may consult extrinsic evidence, such as dictionaries, treatises and expert testim ony for background information and to "shed useful light on relevant art." Phillips

v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (internal citations omitted). In general this type of evidence is less reliable than intrinsic evidence in determining the m eanin g of claim terms and is "unlikely to result in a reliable interpretation of patent claim sco p e unless considered in the context of the intrinsic evidence." Id. at 1318-19. O nce the claims are properly construed, the plaintiff must prove that each claim elem ent is present in the accused product, either literally or by equivalence, to establish infringem ent. Dawn Equipment Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1015 (Fed. Cir. 1998); see also BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed. C ir. 2007) ("Direct infringement requires a party to perform or use each and every step or elem en t of a claimed method or product."). Plaintiff must prove infringement by a

prep on deran ce of the evidence. Nutrinova Nutrition Specialties and Food Ingredients

20

G m bH v. International Trade Commission, 224 F.3d 1356, 1359 (Fed. Cir. 2000). C on versely, defendant can prevail by demonstrating that at least one element of the asserted claim is absent from its devices. Although in defending defendant's motion for summary ju dgm en t plaintiff need provide only enough evidence for a reasonable jury to find infringem ent of the claims and elements challenged by defendant, "a patentee who fails to pro vide probative evidence of infringement runs the risk of being peremptorily nonsuited." N ov artis Corp. v. Ben Venue Laboratories, Inc., 271 F.3d 1043, 1050-51 (Fed. Cir. 2001). G en eral or conclusory assertions are insufficient. TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1372 (Fed. Cir. 2002).

B . Infringement of Claim 7 of the `194 Patent P lain tiff contends that defendant's aircraft infringes claim 7 of the `194 patent because it uses ADS-B Out functionality with a weight-on-wheels switch to indicate that an aircraft is landing. Defendant denies that the equipment used in its aircraft reports the status and location of the aircraft in response to the switch as required by independent claim 1. ( As a dependent claim, claim 7 can be infringed only if the claim from which it depends is infringed.) Defendant raises other arguments as well, but this one argument establishes no n-infrin gem ent, which makes it unnecessary to address the others. The parties' dispute centers on the construction of the term "report the status and

21

lo catio n of the aircraft in response to the switch" in claim 1. `194 pat., col. 7, lns. 39-40. O n November 19, 2008, I granted defendant's request for a claims construction hearing and agreed to construe six terms, including "report the status and location of the aircraft in response to the switch" in claim 1. The parties' core dispute was whether "in response to the sw i tch " meant that the switch has to be actuated for a signal to be transmitted. Defendant con tended that the term required that actuation of the switch trigger the transmission of a signal. Plaintiff contended that the term did not require the actuation of the switch to trigger transmission, but applied to any signal sent whose message changed depending on the state of the switch. At the termination of the January 9, 2009 claims construction hearing, I construed the term to mean "report the status and location of the aircraft when the switch is activated." Dkt. #62 at 1 (emphasis added). Although the construction was intended to supp ort the conclusion that "in response to the switch" meant that activation of the switch triggered the transmission of a signal, plaintiff attempts to interpret the construction d i f f e r e n tly . In opposing defendant's motion for summary judgment, plaintiff resurrects its conten tion that "in response to the switch" does not require activation of the switch but sh ou ld be understood to mean "in response to the state of the switch." Plaintiff's contention w as unpersuasive before and fares no better the second time around. Th e disputed term appears in the fourth separate phrase of claim 1, which reads as

22

f o l lo w s : a communicator operatively connected to the controller for communicating a signal to the air traffic control center to report the status and location of the aircraft in response to the switch; `194 pat., col. 7, lns. 37-40. (Emphasis added). Although the claim language leaves the m eaning of "in response" ambiguous, the specification helps to clear up the ambiguity. The specification says that the controller communicates with an air traffic control center after a sw itch is activated. Id., col. 5, lns. 48-56; col. 6, lns. 1-8, 23-29. It makes it clear that if a sw itch is not activated, the controller does not communicate a signal to air traffic control: The controller 10 polls 56 the switches 12, 14, and 15 to determine the status of the aircraft. If activated (as discussed below), the controller 10 takes appropriate action. If any of the switches are not active, the controller repeats the steps of receiving and an alyzing positioning signals periodically and polling. Id., col. 5, lns. 38-43. Further, the specification always speaks of the controller initiating its communication w ith air traffic control after the switch is activated: After the aircraft has landed the second switch 14 communicates with the controller 1 0 to cancel 58 the flight plan. In response to the switch 14, the controller 10 initiates communication with the flight control center 30 through the communications app aratus 24. I n the event of a mid-flight emergency, the pilot activates 60 the controller 10 by operating the manual switch 15. . . . The controller 10 in the meantime initiates com m unication with the flight control center 30 through the communications app aratus 24.

23

The switch 12 moves from the first off-position to the second actuated-position. The controller 10 is thereby activated 68 to initiate communication with the flight control center 30. Id., col. 5, lns. 52-56; col. 5, ln. 68 - col. 6, lns. 1-6; col. 6, lns. 25-29 (italics added). Initiatin g communication would be unnecessary if, as plaintiff contends, communication was on goin g. The inventors understood how to explain "actions responsive to the status of the sw itch ," as opposed to those "responsive to activation of the switch," as evidenced in the p o rtio n of claim 1 that states, "said controller detecting the status of the aircraft by sensing the switch." Id., col. 7, lns. 35-36. If the inventors had intended to patent an invention in w hich a signal was communicated periodically and only the content of the signal changed, d ep en din g on the status of the switch, they could have written "to report the status and location of the aircraft by sensing the switch." Instead, they chose to say "in response to the switch." That language supports the limitation that no signal is communicated until the c o ntro ller responds to the activation of the switch. Thus, construing "in response to the sw itch" to require activation of the switch to trigger the sending of a signal to air traffic control is not reading a limitation from the specification into the claim but merely using the exam p les in the specification to help explain an ambiguous element in the invention. U sing the proper construction of "report the status and location of the aircraft in respo n se to the switch," no reasonable jury could find that the equipment in defendant's

24

a i r craft literally infringes claim 1 of the `194 patent. It is undisputed that the weight-onw heels switch that defendant's aircraft use in conjunction with transmission of ADS-B po sition report messages does not result in a report on the status and location of the aircraft w hen the switch is activated. Instead, the position report message is sent periodically whether the switch is in open or closed mode; only the content of the message changes. In other w ords, when the aircraft lands and the weight-on-wheels switch changes from open to closed, it is not necessary to activate the switch to trigger a message. The switch on defendant's aircraft is always activated. Regardless of its position, a signal is always being sent to the air co n tro l center. Thus, the equipment on defendant's aircraft does not infringe this element of claim 1, despite plaintiff's conclusory assertions to the contrary. E.g., Plt.'s Add'l PFOF, dkt. #162, at 14 ¶28. TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1372 (Fed. Cir. 2002 ) ("[G]eneral assertions of facts, general denials, and conclusory statements are insufficient to shoulder the non-movant's burden.") From the undisputed facts before the court, no reasonable jury could find that the equipm ent in defendant's aircraft literally infringes the "report the status and location of the aircraft in response to the switch" element of claim 1 of the `194 patent. Therefore, defendan t's equipment cannot infringe claim 7 because that claim is dependent from claim 1. Although plaintiff cites case law on infringement under the doctrine of equivalence

25

in its response brief, Plt.'s Resp. Br., dkt. #136, at 14, it says nothing about why the do ctrine should apply to this element of claim 1. Plaintiff's silence on the subject waives its argument. Central States, Southeast and Southwest Areas Pension Fund v. Midwest M o to r Express, Inc., 181 F.3d 799, 808 (7th Cir. 1999) ("Arguments not developed in any m eanin gfu l way are waived.") Accordingly, defendant's request for summary judgment will be granted as to plaintiff's claim that the equipment in defendant's aircraft infringes claim 7 of the `194 patent.

C . Infringement of Claim 1 of the `366 Patent Plaintiff contends that defendant's aircraft infringe claim 1 of the `366 patent by im p lem en tin g ADS-B In together with TCAS. Although defendant sets out several reasons w h y its aircraft do not infringe claim 1, I need discuss only one because it supports a finding o f non-infringement. Defendant's aircraft do not perform the step in claim 1 of

"synchro nizin g the transmission of said evasive maneuver to said second vehicle through said d ata link." `366 pat., col. 24, lns. 36-37. At the January 9, 2009 claims construction hearing, I construed "synchronizing the transm ission of said evasive maneuver" to mean "coordinating the timing and manner of the tran sm issio n of the evasive maneuver so that the transmission can occur without interfering w ith other transmissions." Dkt. #62 at 2. Dependent claim 3 confirms the validity of this

26

con struction . It claims utilization of "the Global Positioning System's precision time to synchro nize transmission of said position, movement and evasive maneuvers between said veh icles thereby preventing simultaneous transmission of said position, movement and evasive maneuvers by each said vehicle." `366 pat., col. 24, lns. 49-51. In other words, the im p o rtan ce of a method of transmission synchronization is to insure that aircraft do not m iss evasive maneuver data because they are trying to transmit data at the same time. The specification emphasizes this understanding of synchronization. In it, the

inventors discuss the problems with the prior art as well as a preferred embodiment of the i n v en t io n . In the portion of the patent entitled "Background of the Invention," the

inven tors describe several prior collision avoidance systems and their disadvantages. With th e prior aircraft collision avoidance system referred to as the Traffic Alert and Collision Av oida nce System (TCAS), a disadvantage was the difficulty in preventing interference with transm issions between aircraft. The inventors explained that the TCAS interrogator/transponder protocol requires an elaborate antenna sidelobe supp ression and receiver blanking technique to block transponder replies from close aircraft and to allow the system to poll aircraft further away. Such a system is again susceptible to noise, signal clutter, other spurious signals and multiple aircraft transpo nd er within the same transponders reply time frame. Id., col. 4, lns. 40-46. The claimed invention would be an improvement over TCAS, say the in ven to rs, because synchronizing the transmission of an evasive maneuver would prevent difficulties caused by interference and simultaneous transmissions from multiple aircraft.

27

T h e patent's specification provides an example of synchronization when explaining a preferred embodiment of the invention that uses time division multiple access or TDMA pro to co l for communication between aircraft's satellite tracking alert resolution systems (STA R S). Id., col. 10, lns. 20-22. According to the specification, TDMA protocol "works b y dividing a radio frequency into a fixed number of time slots," id., col. 10, lns. 26-27. T D M A is used as an aircraft's data transfer protocol so that"[e]ach STARS transmits on its assign ed slot and receives signals from other STARS on all the other TDMA slots," col. 10, lns. 38-40; see also col. 16, ln. 67 - col. 17, lns. 1-2 ("In the preferred embodiment, the T D M A protocol is used to synchronize STARS beacon and data link signals."); col. 10, lns. 26-28 ("Thus, the TDMA protocol synchronizes into the TDMA slot by finding a clear T D M A channel and transmitting its data block in that slot."). This communication protocol d e m o n s t r a te s transmission coordination of an aircraft's equipment. Therefore,

"synchronizin g the transmission of said evasive maneuver" is properly construed as coordinating the timing and manner of the transmission of the evasive maneuver so that the transm ission can occur without interfering with other transmissions. Plaintiff contends that defendant's aircraft's use of TCAS II to coordinate evasive m an euvers between other aircraft infringes the synchronization step of the method of claim 1. Plaintiff focuses on the fact that TCAS II implements different methods to help avoid transm ission interference. However, none of those methods involve the coordination of the

28

tim in g and manner of the transmission of an evasive maneuver and no reasonable jury could find otherwise. An initial flaw in plaintiff's contention is that some of the methods to which it refers, such as sidelobe suppression, are methods common to TCAS, as the inventors note in the background section of the patent specification. The patented invention was supposed to be a n improvement on TCAS. In fact, the inventors identified the transmission interference problem s common to TCAS as a disadvantage of that prior system. It is illogical to believe that the inventors were trying to patent a method for an automatic collision avoidance system that suffered from one of the specifically enumerated disadvantages found in the prio r art. The methods that TCAS II implements to avoid transmission interference are necessary to avoid the transmission interference expected when aircraft using TCAS II are transm itting messages to each other asynchronously, that is, at random times. For example, an aircraft may have to send multiple resolution coordination messages when using TCAS II (what the patent refers to as evasive maneuver messages) because there is no coordination betw een aircraft about when a message will be transmitted. Thus, the aircraft must transmit the evasive maneuver messages over and over in the hope that one message will get through to the other aircraft. Besides repeated transmissions, TCAS II uses "jittering" to further ran do m ize the repeated transmissions. Again, because of the lack of coordination between

29

aircraft, the randomizing of message transmission times increases the odds of the other aircraft's receiving the message. These transmission interference avoidance methods would be unnecessary if aircraft coo rdina ted the timing and manner of evasive maneuver transmissions as claim 1 requires. T he inventors' method of coordinating or synchronizing transmissions permits an aircraft to know when another aircraft will be transmitting evasive maneuver information, thus "th ereb y preventing simultaneous transmission . . . ." `366 pat., col. 24, lns. 49-50. One could picture communication between aircraft as occurring through a tube in which a m essage can reach the other aircraft only if the message does not run into another message w hile in the tube. Using TCAS II, as defendant does, aircraft send repeated messages at ran do m times expecting that one message will reach the other aircraft before that aircraft sends its own message. Using the synchronizing method in claim 1, aircraft have

coo rdina ted the time and manner in which the message will be sent. Thus, one aircraft know s when a message will be sent from another aircraft and it will not attempt to send a m essage at that time. These methods are not the same. As the patent suggests, the synchronization method is intended to be an improvement over the TCAS II method. N o reasonable jury could find that the equipment in defendant's aircraft literally infringes the synchronizing step of claim 1 of the `366 patent. Plaintiff has not explained w hy the equipment might infringe by equivalence and has waived the argument. Central

30

States, Southeast and Southwest Areas Pension Fund, 181 F.3d at 808. Accordingly, defendant's request for summary judgment will be granted as to plaintiff's claim that the equ ipm ent in defendant's aircraft infringes claim 1of the `366 patent.

D . Defendant's Invalidity Counterclaims In addition to requesting a determination of non-infringement, defendant has requested that the `194 and `366 patents be declared invalid. Specifically, defendant has asserted a declaratory judgment counterclaim to that effect. The Court of Appeals for the Federal Circuit has held that a district court has the discretion to dismiss invalidity cou nterclaim s upon a grant of summary judgment of non-infringement. Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d 1459, 1468 (Fed. Cir. 1998); Cardinal Chemical Co. v. Morton Int'l, Inc., 508 U.S. 83, 95 (1993) (in addressing motion for declaratory judgment district court has discretion to decide whether to exercise jurisdiction even when established). It is appropriate for a district court to address only the infringement issue when noninfringem ent is clear and invalidity is not plainly evident. Id. (citing Leesona Corp. v. U nited States, 530 F.2d 896, 906 n.9 (Ct. Cl. 1976)). D iscretion ary dismissal of defendant's invalidity counterclaims is appropriate in this case because it is clear that the equipment in defendant's aircraft does not infringe the `194 o r `366 patents and it is far less clear whether these patents are invalid. A finding of

31

inva lidity would require combining several pieces of prior art and analyzing disputed facts surrounding aircraft collision systems dating back to the early 1990's. It would be an un necessary expenditure of judicial and party resources to explore these issues at this time, w hen defendant has not given the court any reason to believe that it is at risk of a future infringem ent suit concerning the `194 or `366 patents. Because defendant's motion for summary judgment will be granted on the core issue of non-infringement on clear grounds and because defendants' counterclaim for invalidity is less certain, I exercise my discretionary authority and dismiss defendant's invalidity cou nterclaim without prejudice.

ORDER IT IS ORDERED that: 1 . Defendant United Parcel Service, Inc.'s motion for summary judgment of nonin frin gem en t, dkt. #120, is GRANTED; plaintiff WNS Holdings, LLC has failed to show that any reasonable jury could find that: a. Defendant has infringed claim 7 of plaintiff's U.S. Patent No. 5,355,194 p aten t and is continuing to infringe it by and through the operation of aircraft implementing AD S -B Out with weight-on-wheels switch indicating ground status; b . Defendant has infringed claim 1 of plaintiff's U.S. Patent No. 6,314,366

32

p aten t and is continuing to infringe it by and through the operation of aircraft implementing b oth TCAS and ADS-B In; 2. Defendant's counterclaim asserting invalidity is DISMISSED without prejudice; 3. The clerk of court is directed to enter judgment in favor of defendant with respect to plaintiff's claims for infringement of claim 7 of defendant's U.S. Patent No. 5,351,194 an d claim 1 of its U.S. Patent No. 6,314,366 and to dismiss the remaining claims and co un terclaim s without prejudice in accordance with the order entered on March 13, 2009, dkt. #92, and close this case. E n tered this 14 t h day of July, 2009. B Y THE COURT: __________________________________ B AR B AR A B. CRABB D istrict Judge

33