Opinion
Civil Action No. 1:11-cv-04574
08-13-2015
CASCADES COMPUTER INNOVATION, LLC, Plaintiff, v. SAMSUNG ELECTRONICS CO., LTD., Defendant.
Marc H. Cohen KIRKLAND & ELLIS LLP 3330 Hillview Avenue Palo Alto, CA 94304 David Rokach KIRKLAND & ELLIS LLP 300 North LaSalle Street Chicago, IL 60654 Brandon H. Brown KIRKLAND & ELLIS LLP 555 California Street, 27th Floor San Francisco, CA 94104 Luke L. Dauchot Sharre Lotfollahi KIRKLAND & ELLIS LLP 333 South Hope Street Los Angeles, CA 90017 luke.dauchot@kirkland.com Sharre.Lotfollahi@kirkland.com marc.cohen@kirkland.com Jeanne M. Heffernan KIRKLAND & ELLIS LLP 601 Lexington Avenue, Suite 4100 New York, NY 10022 jeanne.heffernan@kirkland.com drokach@kirkland.com Imron T. Aly Schiff Hardin LLP 233 South Wacker Drive Chicago, IL 60606 (312) 258-5523 ialy@schiffhardin.com brandon.brown@kirkland.com Samsung-CCI-Team@kirkland.com Attorneys for Samsung Electronics Co., Ltd.
RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW ON ISSUE OF VALIDITY
I. INTRODUCTION
Cascades moved for JMOL under Fed.R.Civ.P. 50(a) at the conclusion of all the evidence:
MR. R. NIRO: ... We just orally would move JMOL on the issue of validity, invalidity. There was no evidence presented under Section 112, claim indefiniteness. ...(Trial Tr. 1043-1044). Cascades now renews that motion JMOL under Rule 50(b) on the basis of the jury's verdict, which found the '750 patent valid:
* * * *
MR. R. NIRO: Okay. Section 103, they used the wrong legal standard: Hindsight, he made the wrong comparison, he wasn't comparing claims to the product, he was comparing product to product.
Section 102, the best prior art was before the [P]atent [O]ffice and was considered. And that's the Kelly patent. Le was also before the [P]atent [O]ffice[]. [The patent is entitled to] a presumption of validity. They haven't overcome that presumption.
Question No. 4:
Do you find that Samsung has shown by clear and convincing evidence that any of the following claims of the '750 patent are invalid based on anticipation?
| (for Cascades) | (for Samsung) | |
| Claim 1 | X valid | ___ invalid |
|---|---|---|
| Claim 15 | X valid | ___ invalid |
Question No. 5:
Do you find that Samsung has shown by clear and convincing evidence that any of the following claims of the '750 patent are invalid based on obviousness?
| (for Cascades) | (for Samsung) | |
| Claim 1 | X valid | ___ invalid |
|---|---|---|
| Claim 15 | X valid | ___ invalid |
In short, the decided issue of validity should not be retried and the Judgment, as set forth below, should be made final:
... Judgment is entered on the jury's verdict as follows:
(Dkt. 361).Claims 1 and 15 of U.S. Patent No. 7,065,750 are not invalid. ...
II. SAMSUNG IS NOT ENTITLED TO A NEW TRIAL ON VALIDITY
In Pierce v. Chi. Rail Link, LLC, 2006 U.S. Dist. LEXIS 84885, at *22-23 (N.D. Ill. 2006) (Kennelly, J.), this Court granted a new trial as to one liability claim, plaintiff's FRSA claim against CRL, but denied the motion for new trial on another liability claim, plaintiff's FELA claim, as well as plaintiff's claims against other defendants. The Court reviewed the jury's responses to the interrogatories and refused to disturb the jury verdict as to issues that were not implicated by the new trial. Id. at 21-22.
Here, the jury's verdict as to validity of the '750 patent is separable from the questions of infringement and damages. That verdict should not be disturbed. See, Smart Mktg. Grp. v. Publ'ns Int'l Ltd., 624 F.3d 824, 832 (7th Cir. 2010).
III. THE JURY HAS ALREADY FOUND THAT THE ASSERTED CLAIMS OF THE '750 PATENT ARE NOT INVALID
By statute, each claim of an issued patent is presumed to be valid. 35 U.S.C. § 282. To overcome this presumption, a challenger, like Samsung, must prove invalidity by clear and convincing evidence. Pozen, Inc. v. Par. Pharm, Inc., 696 F.3d 1151, 1159-60 (Fed. Cir. 2012). Here, a jury found that Samsung failed to meet its burden.
Samsung relied on only one item of prior art - United States Patent No. 6,631,514 issued to Bich-Cau Le - but failed to clearly prove that every claim element of claims 1 and 15 was disclosed in the Le prior art. Richardson v. Suzuki Motor Corp., 868 F.2d 1226 (Fed. Cir. 1989). An expert's conclusory testimony, unsupported by independent documentary evidence, cannot supplant the requirement of an anticipatory disclosure. Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461 (Fed. Cir. 1997). In contrast, Mr. Purdy showed that significant elements of claims 1 and 15 are missing from the Le patent. Hence, there was no clear and convincing evidence of anticipation.
As for obviousness, each asserted claim of the '750 patent had to be proven obvious, e.g., that each and every limitation of claims 1 and 15 would have been obvious to one of skill in the art at the time of the invention. See, Honeywell Int'l. Inc. v. United States, 609 F.3d 1292, 1300-01 (Fed. Cir. 2010) ("Given the failure to prove that the cited references disclose [claim] element (a)(3), the Government has failed to carry its burden of proving by clear and convincing evidence that the claimed invention would have been obvious to one of skill in the art."). Conclusory testimony, like that given by Professor Medvidovic, is not sufficient to meet Samsung's clear and convincing burden: "General and conclusory testimony ... does not suffice as substantial evidence of invalidity." Koito Mfg. Co. v. Turn-Key Tech, LLC, 381 F.3d 1142, 1151 (Fed. Cir. 2004). IV. INDEPENDENTLY OF THE JURY'S FINDING, THE '750 PATENT IS NOT INVALID FOR ANTICIPATION OR OBVIOUSNESS
Cascades is entitled to judgment as a matter of law for four reasons, independently of the jury's verdict. First, the Le patent was identified in the Patent Examiner's search for relevant prior art:
Q. Was the Le patent specifically found by the patent examiners during their search of the prior art?(Trial Tr. 679-680). The relevant portion of the file history for the '750 patent with the search notes regarding the Le patent is reproduced below:
A. Yes.
Q. How do you know that?
A. We go to the file history. And we look at that and find out which categories patent examiners searched. And they have notes on what exactly they looked at.
Q. All right. I'm going to show you an excerpt from the patent examiner's search notes. Now, the examiner did a search of the prior art. And can you tell from your examination of this prosecution history whether the patent examiner considered and identified and located the Le prior art patent?
A. Yes.
Q. This number right here, it indicates what? It's 6631514. Do you know what number that is?
A. That's the identifier of the Le patent which we call the '514.
| S46 | 2 | "6247172".URPN. | USPAT | OR | OFF | 2004/07/06 10:29 |
| S47 | 18 | ("5974524" "6154877" "6345351""6425118" 6594821" "6631514""6795966" "6820255" "6826682")'pn. | US-PGPLB;USPAT;EPO; JPO;DERWENT;IBM_TDB | OR | OFF | 2005/05/17 18:19 |
9. Claims 35-56 are rejected under 35 U.S.C. 102(e) as being anticipated by US Patent 5,832,205 to Kelly et al(Exhibit A, p. 4 of Office Action). Hence, the Kelly '205 patent is presumed to be the most relevant prior art because it is the prior art the Examiner relied upon and 37 C.F.R. 1.104(c)(2), patent examining procedure requires examiners to apply what they consider to be the best prior art:
In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated(Exhibit B, 37 C.F.R. 1.104(c)(2)) (emphasis added).
as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.
Second, Mr. Purdy showed that the Le patent did not anticipate either claim 1 or 15 because multiple elements of the asserted claims were not disclosed in Le:
Q. ... In your analysis of Le, did you compare it with the claims, and if so, what did you find?(Trial Tr. 732). In other words, as Mr. Purdy testified, the Le '514 patent does not teach or disclose at least three elements ("documentation generator," "documentation tracker," and "recovery mechanism") of claim 1 of the '750 patent and two elements ("generating a set of documentations" and "using one of documentations") of claim 15 of the '750 patent, as shown in PDX-146 and PDX-147.
A. I compared that against the claims, and my opinion is that Le is teaching a different mechanism for recovery.
Q. Let me show you Exhibit 146. Did you prepare this?
A. I --
Q. Or direct its preparation?
A. Yes, I did.
Q. All right. It says, U.S. patent Claim 1, and compares Le, and then there are some no, no, nos in elements D, E, and F. Is that consistent with your opinion?
A. That is my opinion.
Q. And as to Claim 15, elements C and D are not present in Le?
A. That's correct. That's my opinion.
Image materials not available for display.
Third, Dr. Medvidovic admitted the words of multiple elements of claims 1 and 15 could not be found in the Le '514 patent.
Q. When you get to documentation generator of Claim 1, it calls it documentation generator, do you see that?(Trial Tr. 998-999). Given Dr. Medvidovic's admissions about the failings of the Le patent, there can be no anticipation.
A. I do.
Q. And you compared it with some language from Le, correct?
A. That is correct.
Q. Do the words "documentation generator" appear in what you have quoted, yes or no?
A. They do not.
Q. They do not?
A. No.
Q. So there is no match?
A. The words do not appear. There is a match.
Q. I see.
And then when you go to Documentation Tracker in Claim 1, Documentation Tracker, you have a big section that you quote. The words "documentation tracker" aren't present in Le, correct?
A. That is also correct.
Q. And when you to the words "recovery mechanism" in Claim 1 of the '750 patent, you don't find those words in the corresponding section that you quote from the Le patent, correct?
A. That is correct. Recovery mechanism doesn't show up in those callouts.
Q. And when you go to Claim 15 and you look at the term "generating a set of documentations" in Claim 15, the words "generate," "set," and "documentations" don't appear in the Le patent where you make this correspondence, right?
A. That is fair, yes.
Q. That's correct, isn't it?
A. That is correct. It doesn't appear there.
Q. And for Claim 15 where the words "documentations" and "foreign state" appear, you don't find that, for example, in your slide 138 when you're comparing them, correct?
A. "Documentation" doesn't appear. And I just want to make it clear, because I mentioned this already, the Le patent doesn't use the word "foreign." It uses "legacy."
Q. The words don't appear, they don't match, right?
A. "Foreign state" does not appear, correct.
Finally, Dr. Medvidovic used the wrong legal standard for obviousness - he used hindsight (Trial. Tr. 984-986). He also made the wrong comparison by comparing products to products, rather than the claims of the '750 patent to the accused product.
V. INDEFINITENESS
Samsung presented no evidence that claim 1 or claim 15 is indefinite. Accordingly, the Court correctly entered Judgment on that issue:
Well, I told you during the trial. I mean, the standard on that is if I can construe the patent, then it's not indefinite, and I did, so it's not indefinite. So to me, the judgment ought to say there's no infringement of Claims 1 and 15, Claims 1 and 15 are invalid -- valid, rather, judgment entered for the plaintiff -- or for the defendant.(7/29/2015 Hearing Tr. 4-5).
VI. THE EXCLUDED EXHIBITS GIVEN TO THE JURY HAD NOTHING TO DO WITH SAMSUNG'S EVIDENCE OF INVALIDITY
The documents inadvertently given to the jury by Samsung (DX-250, DX-317, DX-328 and DX-388) do not relate in any way to Samsung's evidence of invalidity or, more importantly, to Cascades' rebuttal evidence of validity. Samsung's invalidity case was based entirely upon the Le prior art patent. None of the excluded documents has anything to do with the Le patent or its alleged application to claims 1 and 15. In opposing Cascades' motion for a new trial, Samsung did not suggest that the documents improperly given to the jury had any bearing on the jury's finding of validity. Any argument to the contrary now would be disingenuous: if Cascades and its counsel were misusing the patent system, as Samsung argued, that would actually support Samsung's claim of invalidity.
The excluded documents were defendant's exhibits and supported Samsung's case. Hence, even if they were considered by the jury, they do not contradict the verdict on validity.
VII. CONCLUSION
Samsung had a full and fair opportunity to present its case for invalidity. It has no legal basis to retry invalidity in the retrial. Dated: August 13, 2015
Respectfully submitted,
/s/ Raymond P . Niro
Raymond P. Niro
NIRO, HALLER & NIRO
181 West Madison Street, Suite 4600
Chicago, Illinois 60602
(312) 236-0733
Fax: (312) 236-3137
rniro@nshn.com
One of the Attorneys for
Cascades Computer Innovation , LLC
CERTIFICATE OF SERVICE
The undersigned hereby certifies that on August 13, 2015 the foregoing:
RENEWED MOTION FOR JUDGMENT AS A
MATTER OF LAW ON ISSUE OF VALIDITY
was filed electronically with the Clerk of the Court for the Northern District of Illinois using the Court's Electronic Case Filing System, which will send notification to the registered participants of the ECF System as listed: Marc H. Cohen
KIRKLAND & ELLIS LLP
3330 Hillview Avenue
Palo Alto, CA 94304
David Rokach
KIRKLAND & ELLIS LLP
300 North LaSalle Street
Chicago, IL 60654
Brandon H. Brown
KIRKLAND & ELLIS LLP
555 California Street, 27th Floor
San Francisco, CA 94104
Luke L. Dauchot
Sharre Lotfollahi
KIRKLAND & ELLIS LLP
333 South Hope Street
Los Angeles, CA 90017
luke.dauchot@kirkland.com
Sharre.Lotfollahi@kirkland.com
marc.cohen@kirkland.com
Jeanne M. Heffernan
KIRKLAND & ELLIS LLP
601 Lexington Avenue, Suite 4100
New York, NY 10022
jeanne.heffernan@kirkland.com
drokach@kirkland.com
Imron T. Aly
Schiff Hardin LLP
233 South Wacker Drive
Chicago, IL 60606
(312) 258-5523
ialy@schiffhardin.com
brandon.brown@kirkland.com
Samsung-CCI-Team@kirkland.com
Attorneys for Samsung Electronics Co., Ltd.
I certify that all parties in this case are represented by counsel who are CM/ECF participants.
/s/ Raymond P . Niro
Attorney for
Cascades Computer Innovation , LLC