The opinion of the court was delivered by: Hurley, Senior District Judge
MEMORANDUM & ORDER UNDER SEAL
Plaintiff CA Inc. ("CA"), formerly known as Computer Associates International, Inc., commenced this action seeking a declaratory judgment that three patents owned by Defendants Simple.com, Inc. and Wired Solutions, LLC (collectively "Simple") are invalid, unenforceable, and not infringed by CA. Simple has counterclaimed for infringement. Presently before the Court are the parties' objections to the Report and Recommendation Regarding Infringement ("R&R") (Dkt. No. 561) of Special Master Gale Peterson. For the reasons set forth herein, the objections are denied in part and granted in part.
A complete factual recitation regarding this matter is contained in this Court's Claim Construction Memorandum & Order, dated March 5, 2009 ("Claim Constr. Mem."), familiarity with which is presumed. For present purposes it suffices to state that the three patents at issue relate to computer technology and are U.S. Patent Nos. 6,272,493, 6,434,563, and 6,535,882 (the '493, '563, and '882 Patents respectively). In general, the subject matter claimed in the '493, '563, and '882 Patents is meant to provide, what the patentee terms, a windowed content manifestation environment ("CME"). An exemplary CME is displayed below in Figure 1,*fn1 a copy of Figure 2B from the '493 Patent. Figure 1:
According to the patentee, this was an improvement over pre-existing technology because the claimed invention lets one open, view, resize, minimize, move and otherwise use multiple window objects on the same web browser screen, without: (1) triggering a refresh;*fn2 (2) having to go back and forth from one web page to another; or (3) requiring the use of another web browser. For example, a user could open, resize, move, close or otherwise manipulate the "NEWS" and "TRAVEL" windows, shown above, without forcing the entire CME to be refreshed. Having briefly described the technology at issue, the Court will summarize the Special Master's recommended disposition.
II. The Special Master's Recommendation
In his R&R, the Special Master recommended that the Court grant CA's motion for summary judgment of non-infringement and deny Simple's motion for summary judgment of infringement. (R&Rat 65, 138-40.) He based this recommendation on the observation that there was no genuine issue of material fact that: (1) "the accused products do not contain 'window objects,' do not meet the 'continuously manifested' limitation and do not meet the limitations of the asserted claims when used with Netscape Navigator"; (2) CA "does not make, sell or offer to sell the claimed inventions"; and (3) CA's "UniCenter TNG; CleverPath Portal SDK v. 4.0, 4.01, 4.5 & 4.51; CleverPath Portal Visualization Preview v. 3.51; UniCenter CA7 Job Mangement Work Station; UniCenter Enterprise Job Manager v. 1.0; [and] BrightStor Test Drive do not meet the limitations of the asserted claims." (Id. at 138-39.) The Court will now summarize the parties' objections.
Simple objects to the R&R, maintaining that the Special Master failed to recognize that CA's CleverPath Portal and related products infringe the '493, '563, and '882 Patents. (Defs.' Mem. In Supp. of Their Objections to the R&R (Dkt. No. 567), at 1 ("Simple's Objections").) According to Simple, the Special Master's recommendation of non-infringement is incorrect because it is based on an inaccurately construed set of claim terms and, even if the Special Master's claim construction were correct, he misapplied his own definitions in comparing CA's infringing software with the claim language at issue. (Id. at 1; Defs.' Reply Mem. In Supp. of Their Objections to the R&R (Dkt. No. 594) ("Simple's Reply Objections"), at 1.)
For its part, CA argues that the Special Master: (1) incorrectly determined that certain claims in the '493, '563, and '882 Patents, which were initially put at issue by Simple, were "implicitly withdrawn merely because [(a)] Simple failed to provide any evidence to support" claims that they were infringed "in response to CA's motion for summary adjudication and . . . [(b)] Simple's expert either failed [to] include infringement contentions in his expert report or, in the case of certain claims, affirmatively found that the claims were not infringed"; (2) failed to include additional proof that the CleverPath portlets are not window objects in the R&R; (3) wrongly focused "solely on whether a portlet's act is affected by other content"; (4) improperly construed the term "content" and thus wrongly concluded that "changes in a portlet's size, position or display in response to user operations are not instances in which a portlet is affected by 'other content'"; (5) failed to recognize that it is entitled to summary judgment with respect to all the claims of the '563 Patent and claims 1 through 15 of the '882 Patent because "[t]here is no proof that anyone uses a 'customized browser' with CA's accused products"; and (6) incorrectly found that CA's products are used within a customized web browser. (CA's Objections to the R&R (Dkt. No. 574) ("CA's Objections"), at 1-3 (emphasis in original).)
The parties' objections will be addressed as necessary in the Court's Discussion. First, the Court shall summarize the legal standards applicable to the case at bar.
If objected to, findings of fact or legal conclusions recommended by the Special Master will be reviewed de novo. See Fed. R. Civ. P. 72(b); Thomas E. Hoar v. Sara Lee Corp., 900 F.2d 522, 525 (2d Cir. 1990); see also Order Formally Appointing the Special Master, Docket No. 152, at 4 (stating "[r]review of and appeal from all orders and recommendations, as well as the appropriate standard of review shall be governed by Federal Rule of Civil Procedure 72 and associated case law"); Fed. R. Civ. P. 53(f)(3), (4). Otherwise, the Special Master's findings of fact or legal conclusions must be clearly erroneous to be overturned. See Benicorp Ins. Co. v. Nat'l Med. Health Card Sys., 447 F. Supp. 2d 329, 331 (S.D. N.Y. 2006) (citing Fed. R. Civ. P. 72(b); Thomas v. Arn, 474 U.S. 140, 149 (1985)).
The standard for summary judgment in a patent case is the same as in any other case. See Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998); Union Carbide Corp. v. American Can Co., 724 F. 2d 1567, 1571 (Fed. Cir. 1984). Summary judgment pursuant to Federal Rule of Civil Procedure 56 is only appropriate where admissible evidence in the form of affidavits, deposition transcripts, or other documentation demonstrates the absence of a genuine issue of material fact, and one party's entitlement to judgment as a matter of law. See Cooper v. Ford Motor Co., 748 F.2d 677, 679 (Fed. Cir. 1984). "In ruling on a motion for summary judgment, . . . [a court must] view the evidence presented in a light most favorable to the nonmoving party and . . . draw all reasonable inferences in favor of the nonmoving party." C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 672 (Fed. Cir. 1990). Once a movant has shown the absence of a material issue of fact, the non-movant must put forth sufficient evidence to show that a reasonable jury could rule in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
II. Standard of Law: Infringement
Section 271 of the Patent Act governs infringement and provides that:
(a) Except as otherwise provided in this title [35 U.S.C. §§ 1 et seq.], whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.
35 U.S.C. § 271(a). An infringement determination is a two step process in which a court must first "determine the scope and meaning" of the asserted patent claims and then compare the "properly construed claims . . . to the allegedly infringing device." Cybor Corp. v. Fas Techs., 138 F.3d 1448, 1454 (Fed. Cir. 1998); see also Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1323 (Fed. Cir. 2001); Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir.) (en banc), aff'd, 517 U.S. 370 (1996). An accused product may infringe literally or under the doctrine of equivalents. "Literal infringement requires that each and every limitation set forth in a claim appear in an accused product." Frank's Casing Crew & Rental Tools, Inc. v. Weatherford Int'l, Inc., 389 F.3d 1370, 1378 (Fed. Cir. 2004) (internal citation omitted). "An accused device that does not literally infringe a claim may still infringe under the doctrine of equivalents if each limitation of the claim is met in the accused device either literally or equivalently." Telemac, 247 F.3d at 1330 (citations omitted).
An element in the accused product is equivalent to a claim limitation if the differences between the two are insubstantial. The analysis focuses on whether the element in the accused device performs substantially the same function in substantially the same way to obtain the same result as the claim limitation.
Aquatex Indus., Inc. v. Techniche Solutions, 419 F.3d 1374, 1382 (Fed. Cir. 2005). An infringement determination, "whether literal or under the doctrine of equivalents, is a question of fact." Fantasy Sports Props. v. Sportsline.com, Inc., 287 F.3d 1108,1113 (Fed. Cir. 2002). A finding of infringement cannot be avoided with the addition of features or functions to an embodiment of every element of a claimed invention. Vulcan Eng. Co. v. Fata Aluminum Inc., 278 F.3d 1366, 1374 (Fed. Cir. 2002); Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 945 (Fed. Cir. 1990).
Generally the burden of proving infringement is "always" on the patentee and must meet the preponderance of evidence standard. Under Sea Indus., Inc. v. Dacor Corp., 833 F.2d 1551, 1557 (Fed. Cir. 1987). Even when an alleged infringer has moved for declaratory judgment of non-infringement, the patent holder still retains the burden of proof. See, e.g., Glenayre Elecs., Inc. v. Jackson, 2003 U.S. Dist. LEXIS 2332, at *47 (N.D. Ill. Feb. 18, 2003). As such, "an accused infringer seeking summary judgment of non[-]infringement may meet its initial responsibility either by providing evidence that would preclude a finding of infringement, or by showing that the evidence on file fails to establish a material issue of fact essential to the patentee's case." Novartis Corp. v. Ben Venue, 271 F.3d 1043, 1046 (Fed. Cir. 2001). Having set forth, in general, the legal standard for infringement, the Court will apply specific case law as needed in its discussion.
Generally speaking, the Court must answer the following questions: (1) Do CA's accused products contain window objects whose acts are not constricted by other content in the same HTML document?; (2) Does Simple's claim for infringement under the doctrine of equivalents survive?; and (3) Does the Court retain jurisdiction to determine whether all of the claims in the '493, '563, and '882 Patents are not infringed by CA. The foregoing questions will be addressed below seriatim.
I. CA's Accused Products Do Not Infringe the Patents In Suit Because They Do Not Contain Window Objects
Rather than addressing each objection raised by the parties, the Court will focus on determining whether CA's accused products feature window objects that act independently of other content. Indeed, this issue is dispositive and lies at the heart of the parties' dispute. What follows is a summary of the Special Master's pertinent recommendations, the parties corresponding objections and counter arguments, and the Court's analysis and ruling.
A. The Special Master's Recommendation
The Special Master began his infringement determination by selecting a representative accused product and then discussing whether it contained window objects that acted independently of other content.*fn3 After issuing his substantive recommendations, the Special Master addressed specific arguments raised in the parties' motions for summary judgment of infringement/non-infringement.
1. Selecting a Representative Product
Simple accused the following products of infringing the patents in suit:
(1) CleverPath Portal, versions 3.5, 3.51, 4.0, 4.01, 4.5, 4.51, 4.7 beta;
(2) Cleverpath Portal Test Drive;
(3) UniCenter Management Portal versions 2.0, 3.1;
(4) Brightstor Portal version 1.0;
(5) Bizworks Portal, version 1.5; and
(6) eTrust Security Command Center version 1.0.*fn4 (R&Rat 13.) The parties however, agreed "that the appearance and function of the CleverPath Portal is representative of the appearance and function of all the accused portal products." (Id.) Accordingly, the Special Master focused his analysis on the behavior of "portlets" found in the CleverPath Portal version 3.51 and then applied his recommendations to the remainder of CA's allegedly infringing products.
A screenshot containing an embodiment of the CleverPath Portal is shown below in Figure 2.
The Special Master recognized that it would be necessary to place his interpretation of how a window object, as defined by the patents in suit, would behave independently of "other content" in a "particular HTML document" within the context of CA's CleverPath Portal. In order to do this, he began by explaining that a "'particular HTML document' appears to be [a] browser's rendition of the HTML document from [a host web page such as] www.windows-website.com,*fn5 and [that] 'other content' appears to be the items displayed within the browser's" content manifestation environment. (Id. at 25.) The Special Master then applied these terms to the CleverPath Portal shown above in Figure 2.
To begin with, the Special Master observed that the content manifestation environment of the CleverPath Portal contains portlets such as the "'Accounting.html' (the 'Accounting portlet'), 'Advertising and Marketing.html' (the 'A&M portlet'), 'Computers and Software.html' (the 'C&S portlet'), and 'Electronics and Semiconductors.html' (the 'E&S portlet')." (Id. at 30.) The Special Master went on to note that "other content" in the CleverPath Portal's content manifestation environment also specifically includes: "(1) a logo header having the words 'Workplaces,' 'Knowledge,' 'My Profile,' 'Logoff,' 'Help' and 'Search,' (2) a workplace subheader, and (3) a banner indicating unlicensed use." (Id.) The Special Master then reasoned that while "size and position information from a user, such as dragging and resizing based on the portlet controls, is not 'content[,]' . . . portlet size and position information, not input by a user, should be considered 'content'" because it is supplied by a server.*fn6 (Id. at 32.) In laymen's terms, the Special Master found that other content includes other portlets as well as the header, subheader, banner and anything else displayed in the content manifestation environment of the CleverPath Portal. Having placed its components and features within the context of the patents in suit, the Special Master went on to determine whether the CleverPath Portal actually infringed any of the claims in the '493, '563, and '882 Patents.
2. Determining Whether Portlets Are Window Objects
The Special Master's infringement recommendation began with determining whether the CleverPath Portal contained window objects as defined by the '493, '563, and '882 Patents. According to the Special Master, "[t]he parties' dispute regarding the existence of 'window objects' in the accused portal products center[ed] about whether so-called 'portlets' created in those products meet the requirement that 'a layer acts independently of other content within a particular HTML document.'" (Id. at 14.) Prior to issuing his recommendations, the Special Master conducted a detailed analysis in which he identified the acts of a CleverPath portlet as including: "(1) dragging or moving, (2) resizing[,] . . . [(3)] minimizing[,] . . . [(4)] restoring to pre-minimized size . . . ," as well as (5) displaying content, and then determined whether they could be conducted independently of other content. (R&Rat 14-65.) What follows is a summary of that analysis.
a. The Special Master Recommended That Portlets Cannot Be Moved Independently of Other Content
The Special Master recommended that portlets are not window objects because they cannot be moved independently of other content. In particular, the Special Master focused on what happened when a user tried to: (1) move a portlet over the logo header of the CleverPath Portal; (2) horizontally move a portlet; and (3) vertically move a portlet.
(1) Portlets Cannot Be Dragged Over the Logo Header
First, the Special Master observed that portlets cannot be moved over the logo header found in the content manifestation environment of the CleverPath Portal. (Id. at 31.)
In his demonstration, Mr. Belgard was unable to move the C&S portlet over the logo header. When Mr. Belgard tried to do so, the C&S portlet stopped moving upward. However, the mouse cursor continued to move upward to rest briefly on the word [i.e. link] 'Logoff.' That word changed color, suggesting that the words across the header function in some way when clicked on[.]
(Id.) According to the Special Master,the "inability of Mr. Belgard to move the C&S portlet to overlap the header indicates that the act of moving, at least, is constrained by that header."(Id. at 47.) Figure 3 below provides a visual depiction of Belgard's inability to move the C&S portlet over the logo header.
(2) The Horizontal Movement of Portlets Triggers Various Changes in the Content Manifestation Environment and Is Constrained By an Invisible Grid
The Special Master found that, when portlets are moved horizontally, they trigger various changes in their content manifestation environment but cannot be moved freely. To begin with, the Special Master noted that a portlet can cause other portlets in its content manifestation environment to move as a result of being dragged, horizontally, to another location. For example, the Special Master observed that when the "Accounting portlet moves, primarily three things happen: (1) it 'snaps' to a position relative to the other portlets, (2) it takes the width of the column to which it jumps, and (3) it changes to blue for the duration of the move." (Id. at 42.) The Special Master then noted that when the "C&S portlet [was] moved to an empty space to the right of the columns," and dropped, it "remained at the top of a third column (from the left)" and caused the "E&S portlet [which was] below it" to move up and take its place, as shown below in Figures 4 and 5. (Id. at 42-43.)
The Special Master further observed that the "C&S portlet 'snapped' to a position near the second column, i.e., the gap between the columns remained constant despite dropping the C&S portlet some distance away from the second column from the left." (Id. at 43.) Based upon these observations, the Special Master concluded that when portlets are moved horizontally their position is "constrained by, and depends on, 'other content,' and appears not to meet the definition of 'window object.'" (Id.) The Special Master then detailed the behavior of portlets when they are moved vertically, both up and down a column.
(3) The Vertical Movement of Portlets Triggers Various Changes in the Content Manifestation Environment and Is Constrained By an Invisible Grid
The Special Master found that portlets fail to move independently of other content when they are moved down a column in their content manifestation environment because they cause other portlets in the same column to change their location. (Id. at 44-46.) The Special Master also noted that the repositioned portlet "automatically resizes to adopt the width of the column into which it is moved, as well as . . . the height of the adjacent portlet." (Id. at 46.) The Special Master further observed that a "snapping" feature prevents portlets from either partially or wholly covering any other portlets when they are moved. According to the Special Master, this was further proof of a portlet's dependence on other content. (Id.)
The Special Master then addressed the significance of the fact the portlets turn blue when they are moved.
Also . . . , when moved, the C&S portlet, along with all of the other portlets, turn blue for the duration of the move. That is, the act of displaying information in the C&S portlet is interrupted.
However, it is not clear why that takes place, or that it occurs as a result of "other content within [the] HTML document." It is impossible, therefore, to determine on the present record if turning blue is an instance in which the Accounting portlet does not meet the definition of "window object." (Id. at 50.) In other words, the Special Master found that because CA failed to explain the source code which caused portlets to turn blue when they are moved, it was unclear whether this change in appearance qualified as further proof that they were not window objects that acted independently of other content.*fn7 (Id.) The Special Master then turned his focus to determining whether portlets could be resized independently of other content.
The Special Master observed the behavior of portlets when they are both horizontally and vertically resized. Each action is summarized below.
(1) The Special Master Found That Portlets Can Be Horizontally Resized Independently of Other Content
According to the Special Master, a portlet may be "resized in four ways: (1) changing width, (2) changing height, [(3)] minimizing[,] and (4) restoring to its pre-minimized size." (Id.) The Special Master observed that changing the width of a portlet resulted "in resizing the width of all of the portlets in that row." (Id. at 51-52.) This behavior is illustrated below in Figures 6 and 7. Figure 6 depicts the content manifestation environment of the CleverPath Portal while a user is changing the width of the C&S portlet. Figure 7 ...