United States District Court, S.D. New York
ORDER AND OPINION DENYING MOTION FOR SUMMARY JUDGMENT BASED UPON NON-INFRINGEMENT
ALVIN K. HELLERSTEIN, District Judge.
Intellectual Ventures II LLC ("Intellectual Ventures") sues JP Morgan Chase & Co. ("JPMC") for infringement of U.S. Patent No. 7, 634, 666 (the "666 Patent"), which claims hardware, referred to as a "crypto-engine, " capable of executing two public key encryption protocols. Document discovery concluded on April 10, 2015 and the parties have taken some, but not all, depositions. Prior to the completion of the deposition phase of discovery, JPMC moved for summary judgment based upon non-infringement. I hold that Intellectual Ventures has raised triable issues of fact and deny JPMC's motion.
A. The 666 Patent
The 666 Patent claims a physical co-processor, referred to as a "crypto-engine, " used to assist a host processor, such as a personal or network computer, with the encryption of data. Two aspects of the claimed hardware are particularly relevant. First, the crypto-engine has a Modular Arithmetic Unit capable of "heterogeneous computation, " which means it can execute cryptographic algorithms at a higher speed than that at which the host processor operates. The crypto-engine contains an Interface Control Unit that moderates between the host processor and the Modular Arithmetic Unit, synchronizing the two asynchronous speeds.
Second, the claimed Modular Arithmetic Unit has the capability of executing two commonly-used public key encryption protocols known, respectively, as Rivest-Shamir-Adleman ("RSA") and Elliptic Curve Cryptography ("ECC"). RSA involves the computation of two large prime numbers whereas ECC involves computation based upon points on an elliptic curve. The Modular Arithmetic Unit's selection of the RSA or ECC protocols is based upon an op-code signal generated by a unit known as the "cryptographic controller." According to the patent specification, prior art was unable to conduct such "assymetic cryptographic algorithms" because "in known hardware architecture resources cannot be shared by the algorithms and reused." 666 Patent at 1:5-28; 2:49-63.
Intellectual Ventures alleges infringement of Claim 4 of the 666 Patent, which reads in relevant part as follows:
A crypto-engine for cryptographic processing of data comprising an arithmetic unit operable as a co-processor for a host processor and an interface controller for managing communications between the arithmetic unit and host processor... the interface controller including: a bus interface for connecting high frequency manipulated data inside the arithmetic unit with the lower frequency manipulated data in the host processor; a concatenator/splitter for merging or splitting data width, and a cryptographic controller generating status and interrupt signals for the host processor and generating an op-code signal for the arithmetic unit, the arithmetic unit selecting RSA or [ECC] modes of operation based on the op-code signal.
666 Patent at 11:43-12:19 (emphasis added). The parties primarily dispute the meaning and scope of the italicized clause. The Court previously construed "op-code signal" to mean a "[s]ignal capable of indicating an RSA operation when it has one characteristic and an ECC operation when it has a different charactistic." Order Regarding Claim Construction and Patent Summaries ("Markman Order"), No. 13 Civ. 3777, ECF No. 82 (S.D.N.Y. Mar. 18, 2014).
B. The Accused Product
Intellectual Ventures accuses the IBM 4765 PCIe Cryptographic Coprocessor (the "IBM Crypto Card") of infringing the 666 Patent. See Decl. Brent P. Ray Supp. Defs.' Mot. Summ. J. Based Upon Noninfringement ("Ray Decl."), Exh. D at 285. The parties dispute the functionality and capability of the IBM Crypto Card.
According to Intellectual Ventures, the IBM Crypto Card contains a unit known as the module central processing unit ("MCPU"), which purportedly operates as the cryptographic controller described in Claim 4 of the 666 Patent. See Decl. Sal Lim Supp. Pl.'s Opp'n Defs.' Mot. Summ. J. Based Upon Noninfringement ("Lim Decl."), Exh. C ¶ 23. In addition, the IBM Crypto Card contains a microchip known as "Otello, " which purportedly operates as the arithmetic unit described in Claim 4. See id. ¶ 24. The MCPU is capable of receiving requests from the host processor to carry out either RSA or ECC public key encryption functions. See id., Exh. C ¶¶ 26-29, Exh. G, Exh. N, Exh. Z. The MCPU then generates op-codes for use by Otello. See id. Although not sent to Otello directly, the op-code signals are generated by the MCPU for the sole purpose of instructing Otello to perform a RSA or ECC function. See id., Exh. C ¶¶ 26-32, 35, Exh. G, Exh. N, Exh. Z. Based upon these op-code signals, Otello performs either RSA or ECC functions. See id., Exh. C ¶¶ 29, 33, 35, Exh. Z. Intellectual Ventures argues that this satisfies the language of Claim 4 because the MCPU "generat[es] an op-code signal for" Otello and Otello "select[s] RSA or [ECC] modes of operation based on the op-code signal." 666 Patent at 12:17-19; see Opp'n Br. at 9.
JPMC disputes Intellectual Ventures' description of the IBM Crypto Card. First, JPMC asserts that while Otello performs RSA and several other mathematical functions, it does not perform ECC operations. See Corrected Mem. Law Supp. Defs.' Mot. Summ. J. ("Opening Br.") at 9; Ray Decl., Exh. C at 21, Exh. E ¶ 3. When ECC capability was added to the IBM Crypto Card in September 2010, it was added by updating software executed by the MCPU, and not by reconfiguring Otello's hardware. See id., Exh. E ¶ 6. Thus, it is the MCPU, and not Otello, that is capable of performing ECC operations. See id. Furthermore, the MCPU does not send an op-code signal directly ...