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August 22, 2002


The opinion of the court was delivered by: McMAHON, District Judge.



Plaintiff British Telecommunications ("BT") asserts that Defendant Prodigy Communications Corp. ("Prodigy"), through its business activities as an Internet Service Provider ("ISP"), directly infringes claims 3, 5, 6, and 7 (the "Asserted Claims") of U.S. Patent No. 4,873,662 (the "Sargent Patent" or "'662 Patent"). BT also alleges that Prodigy induces and contributes to infringement by Prodigy subscribers who infringe the Sargent patent by accessing the Internet through the Prodigy service.

The Court has already construed the claims of the patent in its Markman Opinion. British Telecommunications PLC v. Prodigy Communications Corp., 189 F. Supp.2d 101 (S.D.N.Y. 2002) ("Markman Op."). Prodigy now moves for summary judgment of non-infringement under Rule 56 of the Federal Rules of Civil Procedure.

For the reasons stated below, I find that as a matter of law, no jury could find that Prodigy infringes the Sargent patent, nor that Prodigy contributes to infringement of the Sargent patent, nor actively induces others to infringe that patent. I therefore grant Prodigy's motion for summary judgment.

Summary Judgment Standard

A party is entitled to summary judgment when there is no "genuine issue of material fact" and the undisputed facts warrant judgment for the moving party as a matter of law. Fed.R.Civ.P. 56(c); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In addressing a motion for summary judgment, "the court must view the evidence in the light most favorable to the party against whom summary judgment is sought and must draw all reasonable inferences in [its] favor." Matsushita Elec. Indus. Co. Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). Whether any disputed issue of fact exists is for the Court to determine. Balderman v. United States Veterans Admin., 870 F.2d 57, 60 (2d Cir. 1989). The moving party has the initial burden of demonstrating the absence of a disputed issue of material fact. Celotex v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once such a showing has been made, the non-moving party must present "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). The party opposing summary judgment "may not rely on conclusory allegations or unsubstantiated speculation." Scotto v. Almenas, 143 F.3d 105, 114 (2d Cir. 1998). Moreover, not every disputed factual issue is material in light of the substantive law that governs the case. "Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude summary judgment." Anderson, 477 U.S. at 248, 106 S.Ct. 2505.

As a general rule, infringement is a question of fact. SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1116 (Fed.Cir. 1985). However, summary judgment is appropriate if the court, drawing all reasonable inferences in favor of the patentee, concludes that no reasonable jury could find infringement. Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n. 8, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997).



Determining whether a device infringes another's patent is a two step process. First, the Court construes the claims to determine their scope and meaning. The Court did this in its Markman Opinion dated March 13, 2002. British Telecommunications PLC, 189 F. Supp.2d 101. The next step is to compare the allegedly infringing device against the claims as construed to determine whether the device embodies every limitation of the claims. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir. 1998) (en banc).

A device literally infringes a patent, when it "embodies every limitation of the asserted claims." IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1429 (Fed.Cir. 2000); Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991). "Literal infringement of a claim exists when each of the claim limitations `reads on,' or in other words is found in, the accused device." Allen Engineering Corp. v. Bartell Indus., Inc., 299 F.3d 1336 (Fed.Cir. 2002) (citing Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d 1575, 1583 (Fed.Cir. 1995); Amhil Enters. Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed.Cir. 1996)).

Even if a device does not literally infringe a patent, it may still infringe under the doctrine of equivalents. Infringement under the doctrine of equivalents applies when there are insubstantial differences between the claimed invention and the accused product. If an allegedly infringing device performs substantially the same function as the patented invention, in substantially the same way, to yield substantially the same result, it may infringe under the doctrine of equivalents. Warner-Jenkinson Co., 520 U.S. at 21, 117 S.Ct. 1040; see also Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950); Atlas Powder Co. v. E.I. duPont De Nemours & Co., 750 F.2d 1569, 1579 (Fed.Cir. 1984). The doctrine of equivalents focuses on the "role played by each element in the context of the specific patent claim." Warner-Jenkinson Co., 520 U.S. at 40, 117 S.Ct. 1040.

Whether infringement is established literally or under the doctrine of equivalents, every element, or its substantial equivalent, set forth in claim must be found in the product in question. See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935 (Fed.Cir. 1987). No structural or functional limitation in the claim may be ignored. Warner-Jenkinson Co., 520 U.S. at 25, 117 S.Ct. 1040.

The Supreme Court recently clarified the law regarding the doctrine of equivalents in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., ___ U.S. ___, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002). In Festo, the patentee held a patent on a magnetically coupled, rodless cylinder used in machinery. Id., 122 S.Ct. at 1835. As often occurs, the patentee amended the claims of the patent during the prosecution. Id. The amended claims stated that the invention contained a pair of sealing rings, each with a lip on one side to prevent impurities from getting onto the piston assembly. The amendment also added that the outer shell of the device would be made of a magnetizable material. Id.

SMC began making a similar device that differed from Festo's patent in two ways: it had one sealing ring with a two-way lip instead of two sealing rings with a one-way lip, and the outer shell of SMC's device was made of a non-magnetizable material. Festo claimed that SMC infringed its patent under the doctrine of equivalents.

SMC asserted that prosecution history estoppel prevented Festo from claiming that equivalents infringed its patent, because the additional recitations in the amendment narrowed the claim to embrace only devices that included those elements. Prosecution history estoppel requires that patent claims be interpreted in light of the proceedings before the Patent and Trademark Office leading to the issuance of a patent, and precludes the patentee from claiming any interpretations of its patent that were "cancelled or rejected" during the course of the prosecution of the patent. Id., 122 S.Ct. at 1838. If a patentee chooses to amend his claims in light of a patent examiner's rejection, then the patented invention does not encompass the original claim that was rejected by the examiner. Id. (citing Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 228, 26 L.Ed. 149 (1880); Wang Labs., Inc. v. Mitsubishi Elec. Am., Inc., 103 F.3d 1571, 1577-78 (Fed.Cir. 1997)).

Festo argued that prosecution history estoppel applied only when narrowing amendments were made for substantial reasons relating to patentability — for example, when the applicant made the amendment to avoid prior art, but not when an amendment was made for the sake of form. Id. at 1839, 122 S.Ct. 1831. In a controversial decision, the Federal Circuit disagreed, finding that any narrowing amendments made during the patent prosecution foreclosed the patentee from arguing that equivalents infringed elements of their patent, even if the amendment was not made for patentability reasons. Id, 122 S.Ct. at 1835.

The Supreme Court's Festo decision reaffirmed the rule announced in Warner-Jenkinson that prosecution history estoppel applies only where claims have been avoided for a "substantial reason related to patentability," such as to avoid prior art or to address a specific concern such as obviousness. Festo, 122 S.Ct. at 1839 (quoting Warner-Jenkinson, 520 U.S. at 30-32, 117 S.Ct. 1040). Under its ruling, whether prosecution history bars the patentee from claiming equivalents is to be examined on a case-by-case basis:

By amending the application, the inventor is deemed to concede that the patent does not extend as far as the original claim. It does not follow, however, that the amended claim becomes so perfect in its description that no one could devise an equivalent. After amendment, as before, language remains an imperfect fit for invention. The narrowing amendment may demonstrate what the claim is not; but it may still fail to capture precisely what the claim is. There is no reason why a narrowing amendment should be deemed to relinquish equivalents unforeseeable at the time of the amendment and beyond a fair interpretation of what was surrendered. Nor is there any call to foreclose claims of equivalence for aspects of the invention that have only a peripheral relation to the reason the amendment was submitted. The amendment does not show that the inventor suddenly had more foresight in the drafting of claims than an inventor whose application was granted without amendments having been submitted. It shows only that he was familiar with the broader text and the difference between the two. As a result, there is no more reason for holding the patentee to the literal terms of an amended claim that there is for abolishing the doctrine of equivalents altogether and holding every patentee to the literal terms of the patent.

Id., 122 S.Ct. at 1840-41.

The Court noted that Warner-Jenkinson struck the appropriate balance between flexibility and certainty when it placed on the patentee the burden of proving that the amendment was not made for the purposes of patentability. If the patentee cannot provide this explanation, the court will presume that the amendment was for a substantial reason related to patentability, and prosecution history will preclude any reliance on equivalents for the amended element. Id., 122 S.Ct. at 1841-42. So strong is the presumption that, "[W]hen the court is unable to determine the purpose underlying a narrowing amendment — and hence a rationale for limiting the estoppel to the surrender of particular equivalents — the court should presume that the patentee surrendered all subject matter between the broader and the narrower language." Id., 122 S.Ct. at 1842.

Contributory Infringement

Under 35 U.S.C. § 271(c), one who sells a component of a patented invention or a component used in a patented process is liable for infringement as a contributor if: (1) the component is a material part of the patented invention, (2) the seller knows the component is specifically made or adapted for use in an infringement of the patented invention, and (3) the component is not a staple article of commerce suitable for substantial noninfringing use.

Knowledge that one's activity causes infringement is necessary to establish contributory infringement. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469-70 (Fed.Cir. 1990). Absent proof of direct infringement, there can be no contributory infringement or inducement of infringement. Met-Coil Sys. Corp. v. Korners Unltd., Inc., 803 F.2d 684, 687 (Fed.Cir. 1986).

Active Inducement

A claim of active inducement under 35 U.S.C. § 271(b) requires the plaintiff to prove that the accused infringer knowingly aided and abetted another's direct infringement of the patent. Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1306 (Fed.Cir. 1999). "Proof of actual intent to cause the acts which constitute the infringement is a necessary prerequisite to finding active inducement." Hewlett-Packard Co., 909 F.2d at 1469. "It must be established that the defendant possessed specific intent to encourage another's infringement and not merely that the defendant had knowledge of the acts alleged to constitute inducement." Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 553 (Fed.Cir. 1990). The plaintiff must demonstrate that the alleged infringer induced the infringing acts and that "he knew or should have known his actions would induce actual infringements." Id.

The Sargent Patent

The Sargent Patent describes a system in which multiple users, located at remote terminals, can access data stored at a central computer. (Markman Op. at 105-06.) The data is received by the remote terminals via the telephone lines.

The information accessed by the remote terminals is stored on the central computer in the form of blocks, each block identified by a complete address. The central computer uses the complete address to retrieve the block identified by that address from storage when a user requests it. Each block stored on the central computer is comprised of two parts: a first portion, which contains textual and graphical data for display (a display page), and a second portion, not intended for display, which contains the complete addresses of other blocks of information that are related to the current display page. (id.) The two portions of information are stored together — indeed, next to each other — yet they can be separated from each other. (id. at 115-16.) For a given block of information, the displayed (first) portion references other blocks of information, while blocks in the second portion of the block of information contain the complete addresses. (id. at 115-16.)

In the asserted claims, the entire block is transmitted to the remote terminal where the first portion is displayed and the second portion is stored in the local memory. The display page includes abbreviated addresses for particular blocks of information that can be accessed from the central computer. When the user selects one of the displayed abbreviated addresses from the first (displayed) portion of the block, the terminal accesses the second portion of the block from its memory to determine the corresponding complete address. That complete address is then sent via the modem to the central computer to obtain the next desired block of information. (id.)


BT also alleges that the Internet infringes the Sargent patent and that Prodigy facilitates infringement by its subscribers by providing them with access to the Internet. BT contends that Prodigy contributorily infringes or actively induces the infringement of the Sargent patent by providing the necessary software and encouraging its subscribers to access pages of information from Web servers maintained by third parties. Therefore, BT argues, even if Prodigy's servers do not infringe the Sargent patent as a matter of law, summary judgment should be denied because Prodigy infringes the '662 patent by making and using infringing remote terminals.


The Internet

The Internet is a network of computer networks that links millions of public and private computers to form the largest computer network in the world. (Prodigy's Local Rule 56.1 Statement ¶ 1 ("Prodigy's Undisputed Facts"); BT's Local Rule 56.1 Statement ¶ 1 ("BT's Undisputed Facts"); Wah Report ¶¶ 22, 23; Clarke Decl. ¶ 6.) It enables millions of people to obtain and share information electronically. The World Wide Web is a collection of Web pages that are linked together on the Internet. (Wah Report at ¶ 22.)

The Internet relies on several mechanisms to make Web pages available to a vast audience. (Wah Report ¶ 25; Clark Decl. ¶ 6.) These mechanisms include: (1) a uniform naming scheme for locating resources on the World Wide Web, such as the Uniform Resources Locator Standard ("URL"); (2) protocols for access to named resources over the World Wide Web, such as the Hypertext Transfer Protocol ("HTTP"); and (3) HyperText Markup Language ("HTML"). (Wah Report ¶ 25; Clark Decl. ¶ 6.)

HTML is the language in which Web pages are formatted. (Wah Report ¶¶ 24 (citing A Beginner's Guide to HTML, NCSA).) This language is a kind of "publishing mother tongue that all computers may potentially understand." (Id. ¶ 22). HTML allows authors to mark up a document by representing structural, presentational, and semantic information adjacent to the content. (Id. 23.) In HTML, a mark up element is called a tag. These tags include, for example, paragraph separators, text treatments (e.g. bold, italic, etc.), and hyperlinks. (Id.) HTML files may or may not include instructions, including a programming language called JavaScript. (BT's Undisputed Facts ¶ 15; Wah Report ¶ 169.)

HTML files are stored in computers called Web servers. (Wah Report ¶ 24.) A Web server "serves" up Web pages to Web browsers upon request. (Id.) A user looking to access an HTML file stored in a Web server requires a personal computer ("PC") with software called a Web browser. (Id.)

A hyperlink points to the URL for a Web page. (Id. ¶ 27.) Hyperlinks often take the form of a colored text (such as a URL description), logo or image that is displayed on the screen. When a user clicks on the highlighted word or icon, she is sent to the URL requested, or receives more information about what she clicked on.

URLs are identifiers that are used to locate resources on the Internet, such as HTML files stored on a Web server. (BT's Undisputed Facts ¶ 3; Wah Report ¶ 26; Clarke Decl. ¶ 7.) A URL is a compact representation of the location and access method for a resource that is available through the Internet, generally consisting of three pieces of information: (1) the access method, (2) the name of the server where the Web page is stored, and (3) the name of the page itself within the server, which may be depicted as a path. (Wah Report ¶¶ 26, 28.)

For example, in the URL

• "http" is the access method. This identifies the communications service. These include hypertext transfer protocol ("http"), file transfer protocol ("ftp"), gopher, mail, etc.
• identifies the Web server. Names of this form are called DNS names. The Web system makes use of the Internet Domain Name Service, which translates the name of a machine on the network into an Internet address
• a/b/c.html identifies the desired page within the server

(Wah Report ¶ 29; Clarke Decl. ¶ 7.)

When a user requests an HTML file, the browser sends a request to a Web server via the telephone lines. (Wah Report ¶ 32.) The Web server retrieves the file and sends it back to the user's browser. (Id.) The browser then reads and interprets the HTML file and displays the Web page on the user's PC screen. (Id. ¶ 96.) Web browsers and Web servers communicate using the TCP/IP protocol. (Id. ¶ 32.) This is a request/response protocol — when a Web page is requested, the Web browser sends a request to the Web server. (Id.) This request includes a portion of the URL for the requested Web page and the version of the HTTP protocol being used. The Web server responds to the request by sending the contents of the requested Web page to the computer on which the Web browser resides. (Id.)

A Web browser must first establish a connection with a Web server through a network before it can obtain a file from the Web server. (Id. ¶ 33.) Typically, this connection is established on the Internet via a TCP/IP connection. (Id.) To establish a TCP/IP connection, the transport-layer protocol software initiates a request to connect to a special protocol port of the Web server. (Id. ¶ 34.) If the address of the Web server is specified as an IP address in the URL for the requested page, then the computer running the Web browser initiates a request to resolve the domain name into an IP machine address name. (Id.) Once the TCP connection is made, the Web browser can send repeated Web page requests to the same server without making a new connection. (Id.)

Under the current Internet Protocol system, each machine connected to an Internet Protocol ("IP") network is addressed using a 32 bit number, the IP address. These addresses are usually written in "dotted quad" notation, as a series of four 8 bit numbers, written in decimal and separated by periods. For example, an IP address might appear as (BT's Counter to Undisputed Facts ¶ 19.) Many machines have more than one IP address. For example, a machine hosting multiple websites often has an IP address for each website it hosts. Other times, a pool of IP addresses is shared between a number of machines — e.g. on a dynamic IP dialup connection such as the Prodigy Internet Service, a subscriber's machine will be allocated a different IP address each time the subscriber connects. (Clark Decl. ¶ 12.)

The Prodigy Service

Prodigy is an Internet Service Provider ("ISP") that has supplied its customers with access to the Internet since October, 1996. (Prodigy Form 10-K for the period ended Dec. 31, 2000, Exh. B to Decl. of Benjamin Hershkowitz ("Form 10-K")) Prodigy's services include dial-up access, and broadband DSL access service. (Id.) Prodigy's networks can provide dial-up access, using a local telephone call, to approximately 90% of the households in the United States. (Id.)

According to Prodigy's form 10-K, "Prodigy has a variety of arrangements to acquire customers, including . . . contract acquisition programs with selected major PC manufacturers; bundling [connection and browser software] with PCs shipped by leading PC manufacturers; . . . includ[ing] Prodigy software with every copy of Windows 98 and Windows 2000 for sale in retail channels; . . . direct mail and telemarketing. . . ." (Id. at 3.) Prodigy has extensive customer support services to assist members "including toll-free support, various online support options and online members helping members program." (Id.) The technical support is available so that "customers are assisted with Prodigy software installation," among other things. (Id. at 4.) Prodigy provides its customers with a series of products and services containing everything necessary to access the Web.

When a new subscriber seeks to use the Prodigy Internet Service, Prodigy provides the subscriber with a CD containing a Client Kit Software package to install on the subscriber's PC.*fn1 (Wah Report ΒΆ 48 (citing Bhakta Dep. at 138; Exh. F, Prodigy Internet).) This kit includes software that enables a member to dial through a modem into Prodigy's Web server and includes a copy ...

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