Opinion
No. C 02-3162 CW.
August 26, 2004
ORDER ADDRESSING PARTIES' CROSS MOTIONS FOR SUMMARY JUDGMENT RE: PATENT INFRINGEMENT
Plaintiff Gracenote, Inc. moves for summary judgment on its patent infringement, breach of contract, and trademark infringement claims, as well as on Defendant MusicMatch, Inc.'s invalidity and unenforceability defenses to its patent infringement claims (Docket No. 494). MusicMatch opposes the motion, and cross moves for summary judgment on Gracenote's patent infringement, breach of contract, trademark infringement, intentional interference with prospective economic advantage, negligent interference with prospective economic advantage, and unfair competition claims, as well as its non-infringement, invalidity, and unenforceability affirmative defenses and counterclaims (Docket No. 505). The matter was heard on April 16, 2004. Having considered all of the papers filed by the parties and oral argument on the motion, the Court issues this Order addressing the parties' cross motions for summary judgment regarding the patent infringement claims.
MusicMatch also moves to strike Exhibits A to H attached to Gracenote's Motion for Summary Judgment (Docket No. 509) and to strike Exhibit A to Gracenote's Reply in Support of its Motion for Summary Judgment (Docket No. 540). The Court agrees with MusicMatch that these documents are tantamount to separate statements of fact and thus prohibited by the Court's scheduling Orders. The Court therefore grants MusicMatch's motions to strike.
Gracenote moves to strike the Declaration of Bradley Kindig (Docket No. 532), the Rebuttal Report of Bradley Kindig (Docket No. 567), and the Supplemental Declaration of Stuart Soffer (Docket No. 566). Gracenote also makes evidentiary objections to these documents. MusicMatch makes evidentiary objections to certain testimony offered by Dale Tyson Roberts, Ti Kan, and Steven Scherf. The Court denies Gracenote's motions to strike. To the extent that the Court relies upon evidence to which there is an objection, the parties' objections are overruled. To the extent that the Court does not rely on such evidence, the parties' objections are overruled as moot.
MusicMatch objects to Gracenote's late submission of evidence, argument, and case law, in the form of a bench book given to the Court at the summary judgment hearing (Docket No. 582). Gracenote responds that this is simply an accepted use of a demonstrative, and further moves to strike MusicMatch's objection as an impermissible surreply (Docket No. 596). Gracenote's bench book goes beyond a simple demonstrative to include additional legal theories not raised in its briefs. Gracenote's bench book is not part of the record, and the Court will not consider it.
The Court will issue a subsequent Order addressing the non-patent-infringement claims.
BACKGROUND
Defendant MusicMatch produces "Jukebox," a software program that enables computer users to play, record, copy, and manage digital music files and CDs. Most of these CDs do not contain descriptive information about their contents, such as the identity of the artist, the name of the album, or the title of each song. To have such information displayed on the computer screen, customers must either manually enter it into the computer or obtain it from a database of information available through the internet. MusicMatch's Jukebox product includes such an internet-based look-up service, called CDi.Plaintiff Gracenote alleges that MusicMatch's Jukebox product with its CDi look-up service infringes U.S. Patent No. 6,230,192 ('192 patent) and U.S. Patent No. 6,330,593 ('593 patent). In general terms, the '192 patent discloses methods and systems for using internet-based technologies to retrieve and deliver to the user content related to the recording being played. The '593 patent discloses methods and systems for collecting use data, or data reflecting or relating to the use of recordings, which may include data representative of a user's listening behavior and habits. MusicMatch disputes Gracenote's assertion that its Jukebox product infringes these patents.
MusicMatch asserts that the patents-in-suit are invalid, on the basis that the predecessor to Gracenote's competing CDDB look-up service, XMCD/CDDB, discloses all of the limitations of the patents-in-suit, either independently or in combination with other prior art. XMCD used table of contents data, that is, data contained on CDs in order to enable CD players to play the CDs, to create an identifier for each CD. That identifier was then used to associate the CD with user-entered information regarding the contents of the CD. As it evolved, XMCD allowed the album information to be stored on a remote server and shared by multiple users. CDDB was the name given to the database in which the identifiers and corresponding album information was stored. MusicMatch also asserts that the patents-in-suit are unenforceable based on MusicMatch's willful failure to disclose XMCD/CDDB to the Patent and Trademark Office (PTO). Gracenote disputes these contentions.
LEGAL STANDARD
Summary judgment is properly granted when no genuine and disputed issues of material fact remain, and when, viewing the evidence most favorably to the non-moving party, the movant is clearly entitled to prevail as a matter of law. Fed.R.Civ.Proc. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Eisenberg v. Ins. Co. of N. Am., 815 F.2d 1285, 1288-89 (9th Cir. 1987).
Material facts which would preclude entry of summary judgment are those which, under applicable substantive law, may affect the outcome of the case. The substantive law will identify which facts are material. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
The moving party bears the burden of showing that there is no material factual dispute. Therefore, the Court must regard as true the opposing party's evidence, if supported by affidavits or other evidentiary material. Celotex, 477 U.S. at 324;Eisenberg, 815 F.2d at 1289. The Court must draw all reasonable inferences in favor of the party against whom summary judgment is sought. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Intel Corp. v. Hartford Accident Indem. Co., 952 F.2d 1551, 1558 (9th Cir. 1991).
Where the moving party does not bear the burden of proof on an issue at trial, the moving party may discharge its burden of showing that no genuine issue of material fact remains by demonstrating that "there is an absence of evidence to support the nonmoving party's case." Celotex, 477 U.S. at 325. The moving party is not required to produce evidence showing the absence of a material fact on such issues, nor must the moving party support its motion with evidence negating the non-moving party's claim. Id.; see also Lujan v. Nat'l Wildlife Fed'n, 497 U.S. 871, 885 (1990); Bhan v. NME Hosps., Inc., 929 F.2d 1404, 1409 (9th Cir. 1991), cert. denied, 502 U.S. 994 (1991). If the moving party shows an absence of evidence to support the nonmoving party's case, the burden then shifts to the opposing party to produce "specific evidence, through affidavits or admissible discovery material, to show that the dispute exists."Bhan, 929 F.2d at 1409. A complete failure of proof concerning an essential element of the non-moving party's case necessarily renders all other facts immaterial. Celotex, 477 U.S. at 323.
Where the moving party bears the burden of proof on an issue at trial, it must, in order to discharge its burden of showing that no genuine issue of material fact remains, make a prima facie showing in support of its position on that issue. See UA Local 343 v. Nor-Cal Plumbing, Inc., 48 F.3d 1465, 1471 (9th Cir. 1994). That is, the moving party must present evidence that, if uncontroverted at trial, would entitle it to prevail on that issue. See id.; see also Int'l Shortstop, Inc. v. Rally's, Inc., 939 F.2d 1257, 1264-65 (5th Cir. 1991). Once it has done so, the non-moving party must set forth specific facts controverting the moving party's prima facie case. See UA Local 343, 48 F.3d at 1471. The non-moving party's "burden of contradicting [the moving party's] evidence is not negligible."Id. This standard does not change merely because resolution of the relevant issue is "highly fact specific." See id.
DISCUSSION
I. Patent InfringementGracenote asserts that MusicMatch's Jukebox player infringes claims 10, 12, 18, 26, 45, and 58 of the '192 patent and claims 1, 2, 3, 4, 5, 6, 22, 35, 36, 37, 41, 62, 68, 69, 70, 85, 93, 95, and 96 of the '593 patent. Gracenote moves for summary judgment of infringement of the claims 10 and 45 of the '192 patent and claims 22 and 93 of the '593 patent. MusicMatch moves for summary judgment of non-infringement of all of the asserted claims. However, MusicMatch's briefs only address claims 10 and 45 of the '192 patent and claims 22 and 93 of the '593 patent. For this reason, the Court will focus its analysis on these claims, and only address infringement of the other asserted claims to the extent that the other asserted claims have the same limitations as those contained in the claims on which Gracenote moves.
A. '192 Patent
The parties dispute whether the accused devices meet the claim limitation of "determining an indentifier" as required by claim 10 ("determining an identifier from information associated with a recording") and claim 45 ("determining an identifier for the recording") of the '192 patent. The Court construed the term "determining" to mean "fixing conclusively or authoritatively" and the term "identifier" to mean "a string of characters, sequence of bits or other data that establishes identity." Gracenote contends that Jukebox meets this requirement, by "submitting TOC data associated with the recording to a MusicMatch server and receiving data that establishes the identity of the recording back from a MusicMatch server." Johnson-Laird Decl. ¶ 19. MusicMatch does not dispute this description of Jukebox's functionality, but instead argues that it does not meet the claim limitation of "determining an identifier."
The Court agrees with MusicMatch. As described by the parties, Jukebox simply submits TOC data to the server; it does not first perform some manipulation of that data in order to fix an identifier, as the claim limitation "determining an identifier" requires. Indeed, Gracenote does not argue that the TOC data sent to the server is an identifier; instead, Gracenote argues that the information returned by the server, such as album name, artist name, and track titles, constitutes identifying information. However, this interpretation omits a crucial step of the methodology claimed in claims 10 and 45 of the '192 patent. These claims require that an identifier first be determined and then be used to retrieve relevant information over the network.See '192 patent claim 10 (reciting a method consisting of "determining an identifier from information associated with the recording; comparing the identifier with records in a database maintained on a remote computer . . .; and outputting remote data obtained from the network"); '192 patent claim 45 (reciting a method encompassing the steps of "determining an identifier for the recording" and "retrieving from a remote device via the network a uniform resource locator related to the identifier"). The album name, artist name, and track titles returned by the server may or may not meet the claims' requirement that information be returned from the server. However, they do not constitute an identifier, because an identifier is what is used to retrieve the information from the server. Therefore, the Court grants MusicMatch's motion for summary judgment of non-infringement of claims 10 and 45 of the '192 patent.
The remaining asserted claims of the '192 patent include the same "determining an identifier" requirement as claims 10 and 45.See '192 patent claim 12 ("determining an identifier for the compact disc"); '192 patent claim 18 (dependent claim of independent claim 12); '192 patent claim 26 ("determining an identifier for the compact disc"); '192 patent claim 58 ("determining an identifier for the recording"). They also include the same requirement that an identifier first be determined and then be used to retrieve relevant information over the network. See '192 patent claim 12 (reciting a method encompassing the steps of "determining an identifier for the compact disc" and "retrieving from a remote device via the network a uniform resource locator related to the identifier"); '192 patent claim 18 (dependent claim of independent claim 12); '192 patent claim 26 (reciting a method encompassing the steps of "determining an identifier for the compact disc" and "retrieving from a remote device via the network a uniform resource locator related to the identifier"); '192 patent claim 58 (reciting a computer program embodying a method encompassing the steps of "determining an identifier for the recording" and "retrieving from a remote device via the network a uniform resource locator related to the identifier"). Therefore, the accused devices do not infringe asserted claims 12, 18, 26, and 58 for the same reason that they do not infringe claims 10 and 45. The Court grants MusicMatch's motion for summary judgment of non-infringement of claims 12, 18, 26, and 58 of the '192 patent.
B. '593 Patent
The parties dispute whether the accused devices meet the claim limitation of "identifying at least one segment of a recording, fixed in a medium possessed by a user, based on information obtained from contents of the recording stored in the medium for a purpose other than identifying the recording" of Claim 22 of the '593 patent. The parties also dispute whether the accused devices meet the similar claim limitation of collecting use data associated with a "recording identified by information obtained from contents of the recording used to play back contents of the recording perceived by a user" of Claim 93 of the '593 patent. Gracenote asserts that MusicMatch infringes these claims with respect to the playback of audio tracks that have been ripped onto a computer hard drive from a CD. MusicMatch denies this, claiming that when Jukebox rips CD tracks into electronic audio files, it includes the TOC information in order to identify the contents of the recording even though the TOC information is not necessary to enable the playback of the recording. Gracenote does not contest MusicMatch's assertion that TOC information is not necessary to enable the playback of electronic audio files, but argues that these limitations are nevertheless met because TOC data is necessary to enable the playback of CDs.
Gracenote is not asserting that MusicMatch infringes these claims with respect to the playing of CDs.
However, it is the electronic audio files that are being played back, not CDs. These claim limitations thus require that the electronic audio files be identified by information stored in these files for a purpose other than identifying the recording (claim 22) or, similarly, that the electronic audio files be identified by information used to play back these files (claim 93). According to the undisputed facts submitted by MusicMatch, the TOC data is stored in the electronic audio files precisely for the purpose of identifying the recording (claim 22) and is not used to enable playback of the electronic audio files (claim 93). Therefore, the Court grants MusicMatch's motion for summary judgment of non-infringement of claims 22 and 93 of the '593 patent.
Claims 41, 62, 68, 69, 70, 85, and 95 of the '593 patent include the same requirement that the electronic audio files be identified by information stored in these files for a purpose other than identifying the recording as claim 22 of the '593 patent. See '593 patent claim 41 (reciting a system encompassing an "identification means for identifying a recording based on information obtained from contents of the recording stored in the medium for a purpose other than identifying the recording"); '593 patent claim 62 (reciting a system encompassing a device to "identify the recording from information obtained from contents of the recording stored in the medium for a purpose other than identifying the recording"); '593 patent claims 68, 69, and 70 (dependent claims of independent claim 62); '593 patent claim 85 (dependent claim of independent claim 22); '593 patent claim 95 (reciting a system encompassing an "identification means for identifying a recording based on information obtained from contents of recording used to play back contents of the recording perceived by a user"). The remaining asserted claims of the '593 patent, claims 1, 2, 3, 4, 5, 6, 35, 36, 37, and 96, include the same requirement — that the electronic audio files be identified by information used to play back these files — as claim 93 does. See '593 patent claim 1 (reciting a system that includes a device to "identify the recording from information obtained from contents of the recording used to play back contents of the recording perceived by a user"); '592 patent claim 2 (reciting a method encompassing the step of collecting use data associated with a recording "identified by information obtained from the recording used to play back contents of the recording perceived by the user"); '592 patent claims 3, 4, 5, 6, and 35 (dependent claims of independent claim 2); '593 patent claims 36 and 37 (dependent claims of claim 35, which is a dependent claim of claim 2); '593 patent claim 96 (reciting a device to form a process encompassing the step of collecting use data associated with a recording "identified by information obtained from contents of the recording used to play back contents of the recording perceived by a user"). Therefore, the accused devices do not infringe the remaining asserted claims of the '593 patent with respect to the playback of audio tracks that have been ripped onto a computer hard drive from a CD, for the same reason that they do not infringe claims 22 and 93. The Court grants MusicMatch's motion for summary judgment of non-infringement of claims 1, 2, 3, 4, 5, 6, 35, 36, 37, 41, 62, 68, 69, 70, 85, 95, and 96 of the '593 patent with respect to the playback of audio tracks that have been ripped onto a computer hard drive from a CD.
Because the parties only briefed the issue of non-infringement with respect to the playback of audio tracks that have been ripped onto a computer hard drive from a CD, the Court has only addressed whether the accused devices infringe the '593 patent while playing back audio tracks that have been ripped onto a computer hard drive from a CD.
C. On-Sale Bar and Patent Misuse
MusicMatch also argues that the issue of infringement cannot be summarily adjudicated in Gracenote's favor because of the existence of factual disputes with respect to its defenses of on-sale bar and patent misuse. Neither party has moved for summary adjudication of these defenses. Because the Court has already determined that Gracenote is not entitled to summary adjudication of infringement of the asserted claims of the patents-in-suit because the undisputed facts do not establish that the accused devices practice every element of the asserted claims, the Court need not address MusicMatch's contention that factual disputes as to the on-sale bar and patent misuse defenses prevent summary adjudication.
II. Validity
MusicMatch asserts that the patents-in-suit are invalid as anticipated or rendered obvious by the prior art. See 35 U.S.C. § 102 (providing that a patent is invalid if the invention disclosed was fully anticipated by a prior art reference); 35 U.S.C. § 103 (providing that a patent is invalid if the subject matter as a whole would have been obvious in light of the prior art). Gracenote asserts that the patents-in-suit are valid. Both parties move for summary judgment regarding the validity of the patents-in-suit.
A. Legal Standard
A patent is presumed to be valid. 35 U.S.C. § 282. A party alleging that a patent is invalid bears the burden of proof,id., and must overcome this statutory presumption of validity by proving invalidity through clear and convincing evidence,Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1367 (Fed. Cir. 2000).
"A patent is invalid for anticipation when the same device or method, having all of the elements contained in the claim limitations, is described in single prior art reference." Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002); see also Scripps Clinic Research Fdn. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991) ("Invalidity for anticipation requires that all of the elements and limitations of the claim are found within a single prior art reference."). "An anticipating reference must describe the patented subject matter with sufficient clarity and detail to establish that the subject matter existed in the prior art and that such existence would be recognized by persons of ordinary skill in the field of invention." Crown Operations, 289 F.3d at 1375.
A patent is invalid for obviousness if the differences between it and the prior art "are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. § 103(a). To determine if a patent is invalid for obviousness, the court must consider the scope and content of the prior art, the difference between the patented invention and the prior art, and the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see also Crown Operations, 289 F.3d at 1375. "Determinations of obviousness cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention." ATD Corp. v. Lydall, Inc., 159 F.3d 534, 546 (Fed. Cir. 1998). "There must be a teaching or suggestion within the prior art, within the nature of the problem to be solved, or within the general knowledge of a person with ordinary skill in the field of the invention, to look to particular sources, to select particular elements, and to combine them as combined by the inventor." Crown Operations, 289 F.3d at 1376; see also Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1371-72, 1375 (Fed. Cir. 2000).
B. '192 Patent
MusicMatch asserts that the '192 patent is invalid as anticipated by XMCD/CDDB and obvious in light of XMCD/CDDB considered in the context of other prior art; Gracenote contends that XMCD/CDDB does not itself anticipate the '192 patent, or, in combination with other prior art, render it obvious.
1. Claims 12, 18, 26, 45, and 58
Gracenote argues that claims 12, 18, 26, 45, and 58 are not anticipated by XMCD/CDDB, in that XMCD/CDDB did not "retriev[e] from a remote device via a network a uniform resource locator related to the identifier" or "link to the remote device via the network, based on the uniform resource locator" as disclosed by these claim. See '192 patent claim 12 (reciting a method encompassing the steps of "retrieving from a remote computer via the network a uniform resource locator related to the identifier" and "linking to a remote device via the network, in response to the uniform resource locator"); '192 patent claim 18 (dependent claim of independent claim 12); '192 patent claim 26 (reciting a computer program embodying a method encompassing the steps of "retrieving from a remote computer via the network a uniform resource locator related to the identifier" and "linking to a remote device via the network, based on the uniform resource locator"); '192 patent claim 45 (reciting a method encompassing the steps of "retrieving from a remote computer via the network a uniform resource locator related to the identifier" and "linking to a remote device via the network, in response to the uniform resource locator"); '192 patent claim 58 (reciting a computer program embodying a method encompassing the steps of "retrieving from a remote device via the network a uniform resource locator related to the identifier" and "linking to a remote device via the network, based on the uniform resource locator").
With respect to the requirement of "retrieving from a remote device via a network a uniform resource locator related to the identifier," MusicMatch responds that XMCD/CDDB was capable of retrieving a uniform resource locator related to the identifier, in that the CDDB database contained fields which were capable of storing URLs. Gracenote apparently contends that this is not sufficient, in that XMCD/CDDB was not specifically designed to facilitate the retrieval of URLs. However, the claim language does not require that the accused device be specifically designed to facilitate the retrieval of URLs; it only requires that the accused device be capable of retrieving URLs. It is undisputed that XMCD/CDDB was capable of this.
Gracenote's contention that XMCD/CDDB was not designed to facilitate the retrieval of URLs, however, has greater relevance to whether XMCD/CDDB disclosed "linking to the remote device via the network, based on the uniform resource locator." XMCD/CDDB did not include a method for linking to the remote device using the retrieved URLs. MusicMatch apparently recognizes this. Rather than arguing that XMCD/CDDB included this element, MusicMatch argues that "inherent in the URL is an invitation to go to the specified address and retrieve additional information." While this may be true, it is not the same as "linking to the remote device via the network, based on the uniform resource locator." Therefore, claim 45 is not invalid as anticipated by XMCD/CDDB.
MusicMatch contends, however, that even if this element is not included in XMCD/CDDB, using URLs to link to the internet to obtain relevant information was a concept that was well known in the art at the time of the invention of the '192 patent. See, e.g., U.S. Patent No. 6,025,837; Library Catalog Browser, BookWhere 2.0. While Gracenote admits that using URLs to link to the internet to obtain information was known in the art, Gracenote asserts that this concept was still in its infancy during 1995 and 1996 when the invention embodied in the '192 patent was conceived and reduced to practice. See Stoffer Decl. at ¶ 18 (noting that the AltaVista web search engine was first made public in December, 1995); Stoffer Decl. at ¶ 52 (noting that in March, 1996 Microsoft released software tools for developing applications with the ability to link to the internet). Given this state of the art, Gracenote contends that it was not obvious to combine CD-player technology with technology to link to information on the internet. See Crown Operations, 289 F.3d at 1376 ("There must be a teaching or suggestion within the prior art, within the nature of the problem to be solved, or within the general knowledge of a person with ordinary skill in the field of the invention, to look to particular sources, to select particular elements, and to combine them as combined by the inventor."). The Court cannot resolve this factual dispute on summary judgment. Therefore, the Court denies both Gracenote and MusicMatch's motions for summary judgment with respect to whether claims 12, 18, 26, 45, and 58 of the '192 patent is invalid as obvious in light of the prior art.
2. Claim 10
Gracenote argues that claim 10 is not anticipated by XMCD/CDDB, in that XMCD/CDDB did not include the "outputting" of "remote data obtained via the network from at least one storage location dynamically determined based on the identifier." MusicMatch disagrees.
The parties' dispute as to whether XMCD/CDDB included this element reflects a broader dispute about the meaning of this claim. The relevant claim language discloses:
A method for associating a recording with output of data on a local computer connected to the network, comprising:
determining an identifier from information associated with the recording;
comparing the identifier with records in a database maintained on a remote computer coupled to the local computer via the network; and
outtputting remote data obtained from the network upon verification of access to the recording by the local computer, the remote data obtained via the network from at least one storage location dynamically determined based on the identifier.
Gracenote understands this claim language as describing a three-step process, in which an identifier is determined, the identifier is used to obtain information stored in a database, and the information stored in the database is used to obtain remote data located in a storage location that is dynamically determined. In contrast, MusicMatch understands this claim language as describing a two-step process, in which an identifier is determined and that identifier is used to return data from a storage location that is dynamically determined. The Court agrees with Gracenote that the claim language contemplates a three-step process. Therefore, this claim is functionally similar to the other asserted claims of the '192 patent, in that it requires that information located at the dynamically determined storage location (i.e., information located through a URL) be displayed. As discussed above, XMCD/CDDB did not include this functionality, although other prior art did. The Court thus grants Gracenote's motion for summary judgment that claim 10 is not invalid as anticipated by XMCD/CDDB, but denies both parties' motions with respect to whether claim 10 is invalid as obvious in light of XMCD/CDDB when considered in light of other prior art.
C. '593 Patent
MusicMatch asserts that the '593 patent is invalid as anticipated by XMCD/CDDB and obvious in light of XMCD/CDDB considered in the context of other prior art; Gracenote contends that XMCD/CDDB does not itself anticipate the '593 patent, nor, even in combination with other prior art, render it obvious.
Gracenote argues that the asserted claims of the '593 patent are not anticipated by XMCD/CDDB, in that XMCD/CDDB did not collect, at the first device (the local computer), use data associated with the recording, as required by all asserted claims of the '593 patent. See '593 patent claim 1 (reciting a system encompassing a "first device" to "collect use data associated with the recording"); '593 patent claim 2 (reciting a method encompassing the step of "collecting, at the first device, use data associated with a recording"); '593 patent claims 3, 4, 5, 6, 35, 36, and 37 (dependent claims of independent claim 2); '593 patent claim 22 (reciting a method encompassing the step of "collecting, at the first device, use data associated with the recording"); '593 patent claim 41 (reciting a system encompassing a "first device" including a "collection means for collecting use data"); '593 patent claim 62 (reciting a system encompassing a "first device" to "collect use data associated with the recording"); '593 patent claims 68, 69, and 70 (dependent claims of independent claim 62); '593 patent claim 85 (dependent claim of independent claim 22); '593 patent claim 93 (reciting a method encompassing the step of "collecting, at the first device, use data associated with a recording"); '593 patent claim 95 (reciting a system encompassing a "first device" including a "collection means for collecting use data"); '593 patent claim 96 (reciting a system for performing the process of "collecting, at a first device, use data associated with playback of a recording").
More specifically, Gracenote contends that XMCD/CDDB did not collect "data pertaining to a user's listening behavior and listening habits in relation to identified recordings," in that XMCD/CDDB collected no user-specific information. This argument is unavailing, because it relies upon a definition of "use data" that is contrary to the definition adopted by the Court, namely "data reflecting or relating to use of recordings, use of portions or segments of recordings, or use of software or hardware, which may include data representative of a user's listening behavior and habits." As construed by the Court, the "use data" that is collected may, but need not, include data regarding a particular user's listening behavior and habits. It may more generally be "data reflecting or relating to the use of recordings." Pursuant to this definition of "use data," which the Court applies, XMCD/CDDB collected "use data," in that they collected album titles, artists, and track names from users who played the recordings. Because XMCD did not prompt the user to enter this information unless and until a particular recording was played, the creation of this information reflected the fact that the recording was being played.
Gracenote also argues that this collection of data performed by XMCD/CDDB is not the collection of "use data" disclosed in the asserted claims of the '593 patent because the '593 patent requires collecting use data about a recording that has already been identified, while the e-mailing of submissions occurs because the system was not able to identify a CD. This argument misconstrues the meaning of the identification step required by the asserted claims of the '593 patent. The asserted claims require that the CD be identified, which it is in XMCD/CDDB when a TOC-based identifier is created. Nothing in the asserted claims requires that the CD be identified in a way that is meaningful to a user, such as by album title or artist, prior to the collection of use data.
Finally, Gracenote argues that even if XMCD/CDDB collected use data, that use data was collected at the server (the second device), and not at the local computer (the first device) as required by the asserted claims. Gracenote's argument erroneously interprets the term "collected" as meaning "stored." While it may not be clear that XMCD stored the use data at the local computer, it cannot be disputed that the data was collected at the local computer, in the sense that it was at the local computer that the data was entered.
Therefore, Gracenote has identified no aspect of any of the asserted claims of the '593 patent that was not included in XMCD/CDDB. The Court grants MusicMatch's motion for summary judgment that the asserted claims of the '593 patent are invalid as anticipated by XMCD/CDDB.
III. Inequitable Conduct
MusicMatch asserts that the patents-in-suit are unenforceable as a result of Gracenote's inequitable conduct during the prosecution of the patents-in-suit, namely its failure to disclose the XMCD/CDDB prior art. Both parties move for summary judgment on this affirmative defense.
To prevail on a defense of inequitable conduct, the alleged infringer must prove, by clear and convincing evidence, that material information was withheld from the PTO and that the information was withheld with an intent to deceive. Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1362 (Fed. Cir. 2003). Information is material if there is a "substantial likelihood that a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent." Baxter Int'l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1327 (Fed. Cir. 1998) (internal quotation marks omitted). Materiality is "judged based upon the overall degree of similarity between the omitted reference and the claimed invention in light of the other prior art before the examiner."Id. at 1328. "Intent to mislead does not require direct evidence, and is typically inferred from the facts." Bristol Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226, 1239 (Fed. Cir. 2003). "Further, where withheld information is material and the patentee knew or should have known of that materiality, he or she can expect to have great difficulty in establishing subjective good faith sufficient to overcome an inference of intent to mislead." Id.
Here, XMCD/CDDB is material prior art, as demonstrated by the Court's conclusion that XMCD/CDDB viewed in combination with other prior art may render the '192 invalid as obvious over the prior art and that XMCD/CDDB does render the '593 invalid as anticipated by the prior art. There is evidence in the record from which the Court could infer that Gracenote withheld this reference with the intent to deceive the PTO. This includes evidence from which it could be concluded that those involved in the patent application process knew about XMCD/CDDB and its materiality, as well as Gracenote's failure to explain its decision not to disclose XMCD/CDDB. However, because intent is an intensely factual question, the Court will not rule on Gracenote's intent in the context of resolving cross motions for summary judgment. Instead, the Court denies both parties' motions for summary judgment with respect to MusicMatch's inequitable conduct defense and will address this issue after trial.
CONCLUSION
For the foregoing reasons, the Court grants MusicMatch's motion for summary judgment of non-infringement of the asserted claims of the '192 patent, and non-infringement of the asserted claims of the '593 patent with respect to the playback of audio tracks that have been ripped onto a computer hard drive from a CD (Docket No. 505). The Court grants Gracenote's motion for summary judgment that the asserted claims of the '192 patent are not invalid as anticipated by XMCD/CDDB (Docket No. 494), but denies both parties' motions for summary judgment with respect to whether the asserted claims of the '192 patent are invalid as obvious in light of XMCD/CDDB viewed in light of other prior art, (Docket No. 494; Docket No. 505). The Court grants MusicMatch's motion for summary judgment that the asserted claims of the '593 patent are invalid as anticipated by the prior art (Docket No. 505). The Court denies both parties' motions for summary judgment with respect to whether the '192 and '593 patents are unenforceable as a result of inequitable conduct (Docket No. 494; Docket No. 505).
The Court grants MusicMatch's motions to strike (Docket No. 509; Docket No. 540; Docket No. 582). The Court denies Gracenote's motions to strike (Docket No. 532; Docket No. 567; Docket No. 566), but grants Gracenote's motion to strike (Docket No. 596).
IT IS SO ORDERED.