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Convolve, Inc. v. Compaq Computer Corp.

United States District Court, S.D. New York

July 11, 2014

CONVOLVE, INC., Plaintiff,
v.
COMPAQ COMPUTER CORP. and SEAGATE TECHNOLOGY LLC, Defendants

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[Copyrighted Material Omitted]

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For Otto G. Obermaier, Special Master, Convolve, Inc., Plaintiff: Tom M. Fini, LEAD ATTORNEY, Debra Brown Steinberg, Kevin James McNamee, Tod Mathew Melgar, Cadwalader, Wickersham & Taft LLP (NYC), New York, N.Y. USA; James T. Bailey, Bailey Duquette P.C., New York, N.Y. USA; James H. Bowhay, PRO HAC VICE, James R. Figliulo, Figliulo & Silverman, P.C., Chicago, IL USA; Stephen D. Susman, Susman Godfrey LLP (TX), Houston, TX USA; Tibor Ludovico Nagy, Jr., Dontzin Nagy & Fleissig LLP, New York, N.Y. USA.

For Massachusetts Institute of Technology, Plaintiff: Tom M. Fini, LEAD ATTORNEY, Debra Brown Steinberg, Cadwalader, Wickersham & Taft LLP (NYC), New York, N.Y. USA; James H. Bowhay, PRO HAC VICE, James R. Figliulo, Figliulo & Silverman, P.C., Chicago, IL USA.

For Compaq Computer Corp., Defendant: Herbert F. Schwartz, LEAD ATTORNEY, Ropes & Gray, LLP (NYC), New York, N.Y. USA; Robert F. Bahrampour, LEAD ATTORNEY, Robes & Gray LLP, New York, N.Y. USA; Robert J. Goldman, LEAD ATTORNEY, Ropes & Gray, LLP (CA), East Palo Alto, CA USA; Carrie A. Jablonski, PRO HAC VICE, Barlit Beck Herman Palenchar & Scott LLP, Chicago, IL USA; Christopher R. Hagale, Bartlit Beck Herman Palenchar LLP (IL), Chicago, IL USA; Christopher D. Landgraff, PRO HAC VICE, Carolyn J. Frantz, Bartlit Beck Herman Palenchar & Scott LLP (IL), Chicago, IL USA; Diane C Hertz, Richard S. Taffet, Bingham McCutchen LLP (NYC), New York, N.Y. USA; Mark E. Ferguson, Barlit, Beck, Herman, Palenchar & Scott, Chicago, IL USA; Mary B. Boyle, McDermott, Will & Emery, LLP (Palo CA), Palo Alto, CA USA.

For Seagate Technology, Inc., Defendant: G. Hopkins Guy, LEAD ATTORNEY, Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA USA; Mary B. Boyle, LEAD ATTORNEY, McDermott, Will & Emery, LLP (Palo CA), Palo Alto, CA USA; Debra Brown Steinberg, Cadwalader, Wickersham & Taft LLP (NYC), New York, N.Y. USA; Lisa Marie Ferri, Obiamaka Patricia Madubuko, McDermott, Will & Emery, LLP (NY), New York, N.Y. USA.

For Seagate Technology, L.L.C., Defendant: Andrew Bennett Kratenstein, Michael S Sommer, Obiamaka Patricia Madubuko, LEAD ATTORNEYS, Lisa Marie Ferri, McDermott, Will & Emery, LLP (NY), New York, N.Y. USA; Daniel E. Alberti, LEAD ATTORNEY, PRO HAC VICE, McDermott, Will & Emery, LLP (Palo CA), Palo Alto, CA USA; Eric W. Hagen, LEAD ATTORNEY, PRO HAC VICE, McDermott, Will & Emery L.L.P. (LosAng), Los Angeles, CA USA; G. Hopkins Guy, LEAD ATTORNEY, Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA USA; Blair Martin Jacobs, McDermott, Will & Emery (DC), Washington, DC USA; David Henry Dolkas, PRO HAC VICE, William George Gaede, III, McDermott Will and Emery LLP (Menlo Park), Menlo Park, CA USA; Debra Brown Steinberg, Cadwalader, Wickersham & Taft LLP (NYC), New York, N.Y. USA; Peter John Sacripanti, McDermott Will & Emery LLP, New York, N.Y. USA; Steven M. Haines, PRO HAC VICE, Seagate Technology LLC, Scptts Valley, CA USA.

For National Union Fire Insurance Company of Pittsburgh, PA, American International Underwriters Insurance Company, Intervenors: Mark D. Sheridan, Patton Boggs, LLP, Newark, N.J. USA.

For Seagate Technology, Inc., Counter Claimant: G. Hopkins Guy, LEAD ATTORNEY, Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA USA; Michael S Sommer, LEAD ATTORNEY, McDermott, Will & Emery, LLP (NY), New York, N.Y. USA.

For Convolve, Inc., Massachusetts Institute of Technology, Counter Defendants: Tom M. Fini, LEAD ATTORNEY, Debra Brown Steinberg, Cadwalader, Wickersham & Taft LLP (NYC), New York, N.Y. USA; James R. Figliulo, Figliulo & Silverman, P.C., Chicago, IL USA.

For Seagate Technology, Inc., Counter Claimant: G. Hopkins Guy, LEAD ATTORNEY, Orrick, Herrington & Sutcliffe LLP, Menlo Park, CA USA.

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MEMORANDUM DECISION AND ORDER

GEORGE B. DANIELS, United States District Judge.

Defendants Compaq Computer Corp. and Seagate Technology LLC bring this motion for summary judgment pursuant to Federal Rule of Civil Procedure 56, seeking dismissal of Plaintiff Convolve, Inc.'s Tenth -- and only remaining -- Claim for Relief. (Mot. for Summ. J. (" MSJ" ), ECF No. 1029.) Plaintiff's Tenth Claim for Relief seeks damages and injunctive relief for Defendants' alleged infringement of United States Patent No. 6,314,473 (" the '473 patent" ), which discloses a particular method for controlling computer disk drive speed and acoustics by means of input shaping and user interface technologies.[1] (Am. Compl. ¶ ¶ 63-66, 115-120, ECF No. 50.) Specifically, Plaintiff alleges that Defendants infringed the '473 patent by selling Compaq computers containing Seagate disk drives that, alone or in combination with Compaq's F10 BIOS interface, wrongfully incorporated Plaintiff's claimed technology. ( See, e.g., Am. Compl. ¶ ¶ 1-2, 4-13, 38-44, 54-62, ECF No. 50.)

Defendants move for summary judgment on the grounds that: (1) the accused drives do not infringe the '473 patent because they do not satisfy the " inverse relation," " user interface," or " commands" elements of the asserted claims under this Court's construction of those terms; (2) there is no evidence that Defendants specifically intended to induce infringement

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with respect to the accused drives; [2] (3) the asserted claims are invalid under the doctrines of anticipation and obviousness; (4) the doctrine of intervening rights precludes a finding of infringement liability for conduct that pre-dates a December 2, 2008 substantive amendment of certain asserted claims; (5) Plaintiff cannot establish that Defendants' alleged conduct satisfies the legal standard for willful infringement; and (6) Plaintiff cannot establish Defendants' damages liability with respect to non-Seagate disk drives. (Mem. in Support of MSJ, ECF No. 1031 (" MSJ Mem." ); Reply Mem. in Support of MSJ, ECF No. 1038 (" Reply Mem." ).) Plaintiff opposes the motion for summary judgment on all grounds. (Mem. in Opp'n to MSJ, ECF No. 1035 (" Opp'n Mem." ).)

The evidence presented by the parties raises no genuine issue of material fact as to the lack of Defendants' infringement liability based on the following three independent grounds: (i) the ATA and SCSI interfaces in Seagate's accused disk drives do not satisfy the patent's required " user interface" element, as construed by this Court; (ii) the commands issued by Compaq's F10 BIOS utility do not satisfy the patent's required " commands" element, as construed by this Court; and (iii) Defendants are entitled to intervening rights arising from the substantive December 2, 2008 amendment of certain asserted claims.[3] Defendants' motion for summary judgment is therefore GRANTED. Plaintiff's Tenth, and only remaining, Claim for Relief is DISMISSED.

I. Factual Background[4]

Convolve, Inc. accuses Defendants Compaq Computer Corp., a manufacturer of computing systems, and Seagate Technology LLC, a manufacturer of disk drives, of selling disk drives and computer systems that infringe Convolve's '473 patent. (Am. Compl. ¶ ¶ 115-120.) The '473 patent teaches a method of customizing disk drive speed and acoustics that allows computer users " to control the trade-off between speed and acoustics." (Am. Compl. ¶ 1.) Specifically, Convolve alleges that Defendants directly and indirectly infringed claims 1, 3, 4, and 7-15 of the '473 patent through sales of the following products: Seagate's Barracuda ATA-III, Barracuda ATA-IV, and U Series 5 drives (collectively, the " ATA drives" ); Seagate's Cheetah 73LP, Cheetah X15 18LP, and Cheetah X15 36LP drives (collectively, the " SCSI" or " JIT" drives, see PFII ¶ 478), and Compaq computers containing Compaq's F10 BIOS utility in combination with Seagate's ATA drives. (Oct. 30, 2007 Initial Expert Report, Pl.'s Ex. 3 at 3, Table 1; Pl.'s

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Resp. to Defs.' Local Rule 56.1 Statement of Undisputed Facts (" PFI" ) ¶ 7; Pl.'s Local Rule 56.1 Counter-Statement of Undisputed Facts (" PFII" ) ¶ ¶ 634, 636.)[5]

On July 13, 2000, original plaintiffs and patent holders Convolve and the Massachusetts Institute of Technology (" MIT" ) filed a Complaint against Defendants alleging, among other claims, misappropriation of trade secrets and infringement of U.S. Patent Nos. 4,916,635 and 5,638,267. (Compl., ECF No. 1.) On November 6, 2001, the Patent & Trademark Office (" PTO" ) granted Convolve's application for the '473 patent. (Am. Compl. ¶ 6; PFI ¶ 2.) On January 25, 2002, Convolve and MIT filed an Amended Complaint asserting the additional claim that Defendants sold products infringing the '473 patent after the patent was issued.[6] (Am. Compl. ¶ 6; PFII ¶ 663.) Beginning March 30, 2004, this Court held a two-day Markman hearing to address the construction of the '473 patent claims, and issued a Markman Order on August 9, 2005. (Mar. 30-31, 2004 Markman Hr'g Trs., ECF Nos. 265-266; Markman Order, ECF No. 397.) An Amended Markman Order was issued on January 13, 2006, modifying only this Court's construction of the " user interface" claim element.[7] (Am. Markman Order, ECF No. 442.)

During the 2006-2011 time period, Defendant Seagate filed three separate ex parte requests with the PTO for reexamination of the '473 patent, seeking to invalidate the asserted claims. (Pl.'s Ex. 6: Dec. 1, 2006 Seagate Reexam. Request; Pl.'s Ex. 14: Aug. 22, 2008 Seagate Reexam. Request; Pl.'s Ex. 85: PTO Denial of Seagate's Feb. 23, 2011 Reexam. Request.) The PTO granted Defendant Seagate's December 2006 Reexamination Request and, on November 27, 2007, rejected claims 1, 3, 4, and 7-15 as anticipated by prior art (i.e., Koizumi, U.S. Patent No. 5,982,570). (Pl.'s Ex. 7: Jan. 26, 2007 PTO Office Action; Defs.' Ex. 38: Nov. 27, 2007 PTO Office Action.) Plaintiff Convolve submitted a Request for Reconsideration of the PTO's decision, explaining why it believed Koizumi did not anticipate the rejected claims. (Defs.' Ex. 46: Jan. 28, 2008 Request for Reconsideration of Nov. 27, 2007 Office Action.) On June 16, 2008, the PTO issued a Final Office Action, responding to Convolve's reconsideration arguments and maintaining its rejection of claims 1, 3, 4, and 7-15 as anticipated by Koizumi. (Defs.' Ex. 47: June 16, 2008 PTO Final Office Action.) In response, Plaintiff Convolve amended patent claims 1, 3, 4, 7-10, 14 and 15, modifying all instances of the term " acoustic noise" to read " seek acoustic noise," and again requested that the PTO reconsider reissuing the '473 patent. (Pl.'s Ex. 11 at 1-10: July 31, 2008 Amendment

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After Final and Interview Summary.) On December 2, 2008, the PTO issued a Reexamination Certificate determining the rejected claims patentable as amended and allowing claims 11-13 as originally issued. (Pl.'s Ex. 1 at 58: '473 C1, Dec. 2, 2008 Reexam. Certificate (" First Reexamination Certificate" ).)

The PTO also granted Defendant Seagate's August 2008 Reexamination Request and, in an Office Action dated June 8, 2009, rejected claims 1, 3, 4, and 7-15 as obvious in light of prior art (i.e., the combination of the Ray Thesis and the Koizumi patent). (Pl.'s Ex. 13: Nov. 20, 2008 PTO Office Action; Defs.' Ex. 41: June 8, 2009 PTO Office Action.) In a Final Office Action dated January 4, 2010, the PTO allowed as patentable claims 11-13 and claims 1, 3, 4, 7-9, and 14, as amended on December 2, 2008. The PTO maintained its June 8, 2009 rejection of claims 10 and 15 as obvious in light of the Ray Thesis and the Koizumi patent. (Defs.' Ex. 42: Jan. 4, 2010 PTO Final Office Action.) Following Plaintiff Convolve's response to the rejection of claims 10 and 15, the PTO ultimately certified the patentability of all reexamined claims, including claims 10 and 15, without further amendment. (Pl.'s Ex. 15: July 20, 2010 Reexam. Certificate (" Second Reexamination Certificate" ).) Defendant Seagate's third and final Reexamination Request was denied by the PTO on April 1, 2011. (Pl.'s Ex. 85.)

On August 16, 2011, this Court granted Defendants' motion for summary judgment, dismissing the last remaining trade secret and patent infringement claims in this action,[8] and denied Plaintiffs Convolve and MIT's motion for summary judgment. (Aug. 16, 2011 Mem. Decision and Order, ECF No. 994.) Plaintiffs filed a timely Notice of Appeal on November 3, 2011. (ECF No. 1005.) On July 1, 2013, the Federal Circuit affirmed summary judgment on the trade secret and '635 patent claims, but vacated this Court's judgment of non-infringement of the '473 patent for failure to meet the " selected unwanted frequencies" limitation, and remanded for further proceedings.[9] (Fed. Cir. Opinion, ECF No. 1013; Mandate, ECF No. 1014.) On remand, Defendants renew their motion, on the grounds not previously addressed by this Court, for summary judgment dismissal of Plaintiff Convolve's '473 infringement claims.[10]

II. Summary Judgment Standard

Summary judgment is appropriate when the evidence presented demonstrates that " there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a). The moving party bears the initial burden of establishing the absence of any material factual dispute. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

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To defeat a motion for summary judgment, the nonmoving party must raise a genuine issue of material fact by citing to admissible evidence that supports each claim on which summary judgment is sought. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 585-86, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986); Fed.R.Civ.P. 56(a), (c).

In determining whether there exists a genuine issue as to a material fact, this Court is required to " resolve all ambiguities and draw all inferences in favor of the party against whom summary judgment is sought." Stern v. Trustees of Columbia Univ., 131 F.3d 305, 312 (2d Cir. 1997). However, a nonmoving party cannot avoid summary judgment simply by relying on " conclusory allegations or unsubstantiated speculation." Fujitsu Ltd. v. Fed. Express Corp., 247 F.3d 423, 428 (2d Cir. 2002) (citation omitted). Nor is the " mere existence of a scintilla of evidence" sufficient for this purpose. Anderson v. Liberty Lobby, 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); see also Niagara Mohawk Power Corp. v. Jones Chem., Inc., 315 F.3d 171, 175 (2d Cir. 2003). Instead, a nonmoving party must show that there is a genuine dispute as to a material fact by pointing to the presence of evidence in the record " such that a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248.

" Summary judgment is as appropriate in a patent case as it is in any other case." C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 672 (Fed. Cir. 1990); see also Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325, 1332 (Fed. Cir. 1998). A patent infringement analysis involves two steps. First, the court determines the scope and meaning of the patent claims asserted. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (" [T]he interpretation and construction of patent claims, which define the scope of the patentee's rights under the patent, is a matter of law, exclusively for the court." ). Second, the accused product, method, or process is compared to the asserted claims, properly construed. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998). The plaintiff bears the burden of showing that each and every claimed element of the patent, or its equivalent, is present in the accused device. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011) (quoting Lemelson v. United States, 752 F.2d 1538, 1551 (Fed. Cir. 1985)).

III. There Is No Genuine Factual Dispute As To Whether The Accused Products Meet All Required Claim Limitations

The parties disagree on the meaning -- and thus the correct application -- of this Court's construction of the " commands" and " user interface" elements of the asserted claims. Defendants submit that infringement of these claim elements is ripe for summary judgment because the only remaining dispute concerns the meaning of this Court's construction of these terms. (Tr. 12:8-20; MSJ Mem. at 18-20; Reply Mem. at 9-10.) Plaintiff contends that summary judgment is inappropriate because Defendants' interpretation of the claim limitations contradicts the Markman Order and, pursuant to Plaintiff's understanding, the undisputed facts satisfy the claims as construed by this Court. (Opp'n Mem. at 11-13; Tr. 63:14-64:8.) Plaintiff urges this Court to reject the " new claim construction argument[s]" made by Defendants with respect to these elements. ( See, e.g., Tr. 64:11-17.) Plaintiff misconstrues

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and misapplies the " user interface" and " commands" claim limitations as construed by this Court. Because the parties do not dispute any material facts with respect to the " user interface" or " commands" limitations, summary judgment is warranted.

A. Claim Construction

It is well-established that " the construction of a patent, including terms of art within its claim, is exclusively within the province of the court." Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1347 (Fed. Cir. 2013) (citation omitted) (" Claim construction presents only legal questions." ). Moreover, " [w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it," lest the parties submit an incompletely constructed claim to the jury. O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008); see also Every Penny Counts, Inc. v. Am. Ex. Co., 563 F.3d 1378, 1383 (Fed. Cir. 2009) (" [T]he court's obligation is to ensure that questions of the scope of the patent claims are not left to the jury. In order to fulfill this obligation, the court must see to it that disputes concerning the scope of the patent claims are fully resolved." ).

A district court may deem it necessary to modify its claim construction due to new information gleaned from an evolving record. Pfizer, Inc. v. Teva Pharms. USA, Inc., 429 F.3d 1364, 1377 (Fed. Cir. 2005) (" [A] conclusion of law such as claim construction is subject to change upon the development of the record." ). Or, a dispute between the parties may prompt clarification of the court's own claim interpretation. O2 Micro, 521 F.3d at 1360 (" When the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute." ); Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed. Cir. 2010) (holding that district court properly undertook to clarify claim term during trial, since failure to do so would " invite[] the jury to define th[e] term on its own in a manner [the Federal Circuit] has questioned in [previous decisions]" ).

B. The " User Interface" Limitation

The " user interface" element of the asserted claims has been construed as follows: " software, hardware, firmware, or a combination thereof that allows a person, directly or indirectly, to alter parameters." (Am. M ...


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