Opinion
CIVIL ACTION NO. 18-11168-GAO
2023-09-21
KOLOGIK CAPITAL, LLC, Plaintiff and Defendant-in-Counterclaim, v. IN FORCE TECHNOLOGY, LLC, Brandon-Copysync LLC, and Brandon D. Flanagan, Defendants and Plaintiffs-in-Counterclaim.
Wyley S. Proctor, Alexander T. Hornat, Anne E. Shannon, McCarter & English, LLP, Boston, MA, for Plaintiff and Defendant-in-Counterclaim. David A. Chavous, Giordano & Chavous LLC, Boston, MA, Edward S. Cheng, Mariem Marquetti, Sherin and Lodgen LLP, Boston, MA, Douglas F. Hartman, Hartman Law, PC, Boston, MA, David A. Gerasimow, Pro Hac Vice, The Law Offices of David A. Gerasimow, P.C., Chicago, IL, John E. Handy, Pro Hac Vice, IP Advanced LLC, Tysons Corner, VA, Anissa Davidson, Chavous Intellectual Property Law, North Andover, MA, for Defendants and Plaintiffs-in-Counterclaim.
Wyley S. Proctor, Alexander T. Hornat, Anne E. Shannon, McCarter & English, LLP, Boston, MA, for Plaintiff and Defendant-in-Counterclaim.
David A. Chavous, Giordano & Chavous LLC, Boston, MA, Edward S. Cheng, Mariem Marquetti, Sherin and Lodgen LLP, Boston, MA, Douglas F. Hartman, Hartman Law, PC, Boston, MA, David A. Gerasimow, Pro Hac Vice, The Law Offices of David A. Gerasimow, P.C., Chicago, IL, John E. Handy, Pro Hac Vice, IP Advanced LLC, Tysons Corner, VA, Anissa Davidson, Chavous Intellectual Property Law, North Andover, MA, for Defendants and Plaintiffs-in-Counterclaim.
ORDER ADOPTING REPORT AND RECOMMENDATION
O'TOOLE, United States District Judge.
The magistrate judge to whom this matter was referred has filed a Report and Recommendation ("R&R") concerning the parties' cross-motions for summary judgment (dkt. nos. 301 & 305). The R&R recommends as follows:
For the reasons set forth above, I recommend GRANTING in part and DENYING in part Kologik's Motion for Summary Judgment (Docket No. 301). The Court should enter a judgment of "no invalidity" as to Defendants' challenge to the validity of the '965 Patent. The Court should deny Kologik's motion for summary judgment as to infringement of the '965 Patent. And the Court should deny Kologik's motion for sanctions under Rule 37(b)(2)(A).
For the reasons set forth above, I recommend GRANTING Defendants' Motion for Summary Judgment of Noninfringement (Docket No. 305). . . .
No objections to the R&R have been filed. "Given proper notice, ... a party's failure to assert a specific objection to a report and recommendation irretrievably waives any right to review by the district court and the court of appeals." Santiago v. Canon U.S.A., 138 F.3d 1, 4 (1st Cir. 1998) (citing Henley Drilling Co. v. McGee, 36 F.3d 143, 150-51 (1st Cir. 1994), and 28 U.S.C. § 636(b)(1)).
The Court therefore ADOPTS the R&R (dkt. no. 350) as follows. Kologik's Motion for Summary Judgment (dkt. no. 301) is GRANTED in part as to no invalidity and DENIED in part as to infringement of the '965 Patent. Kologik's motion for sanctions (dkt. no. 301) is also DENIED. The defendants' Motion for Summary Judgment of Noninfringement (dkt. no. 305) is GRANTED. The Court does not adopt the magistrate judge's recommendation that judgment be entered dismissing Counts 20 and 22.
It is SO ORDERED.
REPORT AND RECOMMENDATION ON CROSS MOTIONS FOR SUMMARY JUDGMENT
LEVENSON, UNITED STATES MAGISTRATE JUDGE.
INTRODUCTION
Plaintiff Kologik Capital, LLC ("Kologik") has sued Defendants In Force Technology, LLC, Brandon-Copsync, LLC, and Brandon D. Flanagan (together, "Defendants"), alleging a variety of claims related to trademark infringement, unfair trade practices, false advertising, and patent infringement. See First Amended Complaint ("FAC"), Docket No. 38.
Currently before the Court are the parties' cross-motions for partial summary judgment, seeking disposition of the remaining patent-related claims in this case. See Docket Nos. 301 (Kologik's Motion for Summary Judgment), 305 (Defendants' Motion for Summary Judgment of Noninfringement). Judge O'Toole has referred the case to me for report and recommendation on dispositive motions. Docket No. 290.
Kologik's FAC alleged that Defendants' software product, known as "InForce911," infringed two patents: U.S. Patent No. 9,047,768 (the "'768 Patent") and 9,641,965 (the "'965 Patent"). See Docket No. 38, at Count 19 (alleging direct infringement of the '768 Patent); Count 20 (alleging direct infringement of the '965 Patent); Count 21 (alleging inducement of infringement of the '768 Patent), and Count 22 (alleging inducement of infringement of the '965 Patent). Kologik subsequently dismissed its direct and indirect infringement claims in connection with the '768 Patent. See Docket No. 327. As discussed below, the only remaining patent claims are based on the '965 Patent. Further, Count 22, alleging that Defendants induced infringement of the '965 Patent, fails if the Court enters a finding of noninfringement. See Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1341 (Fed. Cir. 2008) ("[A] finding of inducement requires a threshold finding of direct infringement—either a finding of specific instances of direct infringement or a finding that the accused products necessarily infringe.").
The parties' pending motions address three separate issues:
First, and most substantive, are the parties' cross-motions for summary judgment on the question of infringement. Each side contends that it is entitled to judgment, based on a factual record that is largely undisputed.
Second, Kologik has moved for summary judgment with respect to Defendants' counterclaim challenging the validity of the '965 Patent. See Kologik's Motion for Summary Judgment, Docket No. 302, at 4-14. In support, Kologik relies on the fact
that Defendants have not engaged an expert to testify about the validity of the '965 Patent. Without an expert, Kologik contends, Defendants cannot point to any evidence to challenge the validity of a patent, which is otherwise presumed to be valid.
Third, Kologik has moved for sanctions on the basis of alleged violations of court orders concerning discovery.
I have considered the parties' supporting memoranda, opposing memoranda, reply memoranda, and statements and counterstatements of material facts. Docket Nos. 302, 303, 306, 307, 314, 315, 316, 320, & 321. In addition, I have considered the parties' supplemental briefs addressing the meaning and construction of specific terms in the claims of the '965 Patent. Docket Nos. 340, 341. I invited these supplemental briefs with a notice that provided, in part:
[T]he Court provides notice to the parties that it is considering the issue of claim construction as to the terms "identifying" and "within a geographic area." Because these terms were not raised at the Markman hearing, the Court is willing to receive additional briefing, limited to 15 pages, concerning those particular terms. This briefing may also include the party's position as to whether the scheduled hearing should include Markman-style argument.
Docket No. 338 at 3.
On May 24, 2023, I heard argument from counsel and took the matter under advisement.
I. Relationship of the Parties
This case arises from competition between two businesses that sell software services designed to enable police departments and other emergency responders to coordinate rapid responses for emergency situations at schools and other at-risk facilities. The businesses share common origins but are now rivals who compete for customers. For present purposes, a schematic overview of the business relationships will suffice.
In 2005, Kologik's predecessor in interest, COPsync, Inc., created a software product known as COPsync911. FAC, Docket No. 38, ¶¶ 16, 17. By Kologik's description, "[w]hen introduced, the COPsync911 Software provided law enforcement the first and only in-car real-time information sharing and data communication network with threat alert service for schools and other potentially at-risk facilities." Id. ¶ 17.
In June 2010, COPsync, Inc. entered into a distribution agreement with an entity known as Brandon Associates, LLC, which later assigned various rights under that agreement to Defendant Brandon-COPsync LLC, Inc. Id. ¶¶ 23, 27. Additional agreements followed, licensing the distributor to use the COPsync trademark. Id. ¶ 29.
Beginning in 2011, COPsync, Inc. applied for patent protection for its software product. Id. ¶¶ 99, 102. On June 2, 2015, the United States Patent and Trademark Office (the "USPTO") issued U.S. Patent No. 9,047,768 (the "'768 Patent") and on May 2, 2017, the USPTO issued U.S. Patent No. 9,641,965 (the "'965 Patent"). Id. Both patents are entitled "Method, System and Computer Program Product For Law Enforcement." Id. ¶¶ 99, 102. The '965 Patent is the focus of the present motions, as the '768 Patent is no longer at issue in this case. The course of business between COPsync, Inc. and Brandon-COPsync LLC did not run smoothly. The Amended Complaint recites a litany of amendments to the distribution and trademark agreements, as well as various disputes about territories, together with lawsuits, settlements, and claimed debts resulting from such lawsuits and settlements. Id. ¶¶ 32-51.
Kologik's FAC alleged that the accused software product, known as "InForce911," infringed both the '768 Patent and the "'965 Patent." See generally Docket No. 38. In a previous ruling, the Court found the '768 Patent to be directed to an abstract idea, although the Court did not ultimately determine the '768 Patent to be patent-ineligible. See Report and Recommendation, Docket No. 202, at 16-30, and Docket No. 287 (adopting Report and Recommendation). Kologik subsequently dismissed with prejudice its claims for infringement of the '768 Patent. Docket No. 327.
On June 30, 2017, Defendant Brandon-COPsync LLC was involuntarily dissolved by the Massachusetts Secretary of State. Id. ¶ 50.
Three months later, on September 29, 2017, COPsync, Inc. filed for Chapter 11 bankruptcy in the Eastern District of Louisiana. Id. ¶ 54. In the wake of the bankruptcy filing, in November 2017, COPsync, Inc. sold various of its assets to Kologik, including all of its trademarks and patents. Id. ¶¶ 56-63. Thus, Kologik is now the owner of the '965 Patent.
As for defendants In Force Technology, LLC and Brandon D. Flanagan ("Flanagan"), the parties dispute the nature and extent of ties between these two defendants and the entities Brandon Associates LLC and Brandon-COPsync LLC. Compare id. ¶ 22, with Answer, Docket No. 57, ¶ 22. The parties also dispute their respective rights and obligations in connection with the agreements entered into by with those prior entities. See FAC, Docket No. 38, ¶¶ 68-96. Some of these disputes are reflected in trademark infringement allegations in the FAC (which are not at issue in the present motions). Id.
Around November 2017, Defendant In Force Technology, LLC was formed as an LLC. Id. ¶ 81. Defendant Brandon D. Flanagan appears to be associated with In Force Technology, LLC, and has in some contexts identified himself as its "President & CEO." Docket No. 38-13, at 3.
In their Answer, Defendants represent that they lack "sufficient information to admit or deny" the allegation regarding the date of formation of In Force Technology, LLC. See Answer, Docket No. 57, ¶ 81. Defendants affirmatively admit, however, that In Force Technology, LLC is a Massachusetts LLC. Id. ¶ 2.
In a February 26, 2018, letter to customers, Defendants Flanagan and In Force Technology, LLC announced that Defendants were developing a new software package to be called "InForce911." Id. at 2. The letter asserted that,' "The new 'In-Force911' is the most powerful school safety solution ever developed!" Id. at 3.
The FAC identifies these as "Kologik's" customers. Docket No. 38, ¶ 80. Whose customers they were is a contested issue that is not amenable to resolution based on the record before the Court.
The focus of the present motions is whether the InForce911 software infringes Kologik's '965 Patent.
II. Legal Standards: Summary Judgment
Rule 56 of the Federal Rules of Civil Procedure provides that, as to "each claim or defense — or the part of each claim or defense — on which summary judgment is sought," the Court "shall grant summary judgment if the movant shows 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). A genuine dispute exists where the evidence "is such that a reasonable jury could resolve the point in the favor of the non-moving party." Rivera-Rivera v. Medina
& Medina, Inc., 898 F.3d 77, 87 (1st Cir. 2018) (quoting Cherkaoui v. City of Quincy, 877 F.3d 14, 23-24 (1st Cir. 2017)). "The court must view the facts in the light most favorable to the non-moving party and draw all reasonable inferences in [its] favor." Carlson v. Univ. of New Eng., 899 F.3d 36, 43 (1st Cir. 2018).
A court may enter summary judgment "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When cross-motions for summary judgment are presented, the Court "must consider each motion separately" and must draw all inferences against each moving party in turn. Reich v. John Alden Life Ins. Co., 126 F.3d 1, 6 (1st Cir. 1997).
III. Kologik's Patent Infringement Claim
a. Patent Claims
While this case ultimately turns on the specific language of the claims of the '965 Patent, a generalized description of the subject of that patent may be helpful. The patent teaches a method that is intended to streamline the process for alerting and coordinating first responses to an emergency. The method aims to convey an alert to law enforcement, identify the location of the emergency, identify appropriate units (such as patrol cars and individual officers) to respond, enable communications between and among those units and the person or entity making the report, connect responding units to one another, and provide location information (such as maps of a school) to responding units.
There is only one independent claim in the '965 Patent at issue here. See Defendants' Statement of Material Facts, Docket No. 307, ¶ 8; see generally '965 Patent, Docket No. 38-17. Claim 1 is followed by dependent claims 2-27, which add a variety of limitations, none of which affect the present motion.
The '965 Patent appears in various docket entries. See Docket Nos. 30-1, 36-1, 38-17, 82-2. References in this report are to the docket entry associated with the FAC. See '965 Patent, Docket No. 38-17.
The pertinent claim language is as follows:
What is claimed is:
1. A method comprising:
receiving a prompt from a user operator using a first unit;
determining a location of the first unit, wherein the first unit is at a facility at the location, wherein the facility includes plural different areas each defining a different portion of the facility, and wherein the location is an address of the facility or GPS coordinates of the first unit;
responsive to the prompt, identifying one or more second mobile units within a geographic area associated with the location;
outputting a communication to the one or more second mobile units;
enabling a direct communication link between the user operator and an operator associated with a respective one of the one or more second mobile units;
receiving information specifying a location of interest from the user operator with the prompt or after receiving the prompt, wherein the location of interest is a specific one of the plural different areas of the facility and is not an area in which the user operator or the first unit is present at the time the user operator provides the information specifying the location of interest, and
wherein the user operator specifies the location of interest with respect to a visual layout of the facility at the location; and
providing environment information to the one or more second mobile units based at least in part on the prompt wherein the environment information includes a visual representation of the layout of the facility at the location including a visual representation of the user specified location of interest.
'965 Patent, Docket No. 38-17, at 15:9-41.
b. The Disputed Step
In their respective motions for summary judgment, the parties focus on one particular step of the patented method. This appears as the third step in the sole independent claim of the '965 Patent ("Claim 1"). The parties sometimes refer to this step as "Claim 1(c)" or just "c." In the interest of consistency, I will refer to "Claim 1(c)." The description of this step reads as follows:
responsive to the prompt, identifying one or more second mobile units within a geographic area associated with the location;
'965 Patent, Docket No. 38-17, at 15:18-20.
The parties sharply dispute what Claim 1(c) entails — that is, how the claim should be construed. As discussed in greater detail below, the parties disagree about the meaning of the terms "identifying" and "within a geographic area." The central question before the Court is a legal one, which turns on ascertaining the meaning of Claim 1(c) and its applicability to the method of the InForce911 system. See generally Markman v. Westview Instrs., Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) ("[T]he construction of a patent, including terms of art within its claim, is exclusively within the province of the court.").
c. Uncontested Material Facts
There is no dispute about the literal words of the '965 Patent. Within the '965 Patent specification, there are descriptions of embodiments that illustrate ways of accomplishing the "identifying" step that is taught in Claim 1(c). These embodiments, of course, do not define or limit the plain meaning of the words used in Claim 1(c). But they provide a useful counterpoint, which highlights the ways in which In-Force911 differs from the readily understood teaching of the patent. There is no dispute that these embodiments are described by Claim 1(c).
Nor is there any material dispute about what the accused system actually does. Leaving aside legal conclusions about whether InForce911 employs the disputed step, Kologik and its computer science expert, Dr. Guilio Amodeo ("Dr. Amodeo"), describe the processes found in the source-code for the InForce911 system. The source code for InForce911 was produced in discovery and has been reviewed by Dr. Amodeo, who has produced a 23-page expert report ("Amodeo Report") as well as a supplemental declaration offered in opposition to Defendants' motion for summary judgment ("Amodeo Declaration"). See Amodeo Report, Docket No. 303-4; Amodeo Declaration, Docket No. 314-12. As discussed in detail below, these expert submissions help narrow the factual issues before the Court. The factual assertions advanced by Kologik and Dr. Amodeo do not contradict Defendants' own description of the workings of the InForce911 program.
i. Illustrative Embodiments in the Patent
The embodiments specified in the '965 Patent accomplish the step of "identifying"
units (such as patrol cars) "within a geographic area," by means that would be familiar to any consumer who uses Uber or Lyft. These embodiments describe processes for identifying units based on their real-time proximity to the location of the initial prompt or based on the units' presence within a defined geographic area. Two main variants are depicted in Figure 3 and in Figure 4, and are further detailed in the written specification. As discussed below, both embodiments accomplish the disputed step ("identifying ... units within a geographic area") in essentially the same way: by checking a database of unit location information that is updated every fifteen seconds.
1. The Figure 3 Embodiment
Image materials not available for display. '965 Patent, Docket No. 38-17, Fig. 3.
Figure 3 illustrates a process for responding to a situation, such as a motor-vehicle stop, in which the initial prompt consists of a report of information, such as a license plate or driver's license, which is sent to the crime-fighting services platform ("CSP"). '965 Patent, Docket No. 38-17, at 5:11-22. At the outset, the CSP performs a database search to determine whether there is a likely threat. Id. A determination of a likely threat, in turn, is the prompt for the ensuing steps.
CSP is defined in the '965 Patent, Docket No. 38-17, at 3:15-16.
With respect to the disputed step, "identifying... units within a geographic area," the description of the method shown in Figure 3 spells out the process. If the vehicle/person is identified as a threat, "then the CSP executes a software application for identifying a predetermined number (e.g., 5) of other patrol units that are most geographically proximate to the patrol unit in probable danger." Id. at 5:24-26. As noted in the box marked "320" on Figure 3, the "location database" itself is populated by a process whereby "[a]ll units report their location to the CSP every 15 seconds." Id., Fig. 3. The written specification spells out this vehicle location process as follows:
As shown at a step 320, through the network 102, the patrol units report their respective then-current geographic locations to the CSP at a periodic rate (e.g., once every 15 seconds), so that such reports are periodically updated. The CSP automatically receives such reports through the network 102, and the CSP accordingly updates its record of such locations in a database of auto vehicle location ("AVL") information (e.g., stored in the computer readable medium 212 of the CSP), so that the CSP: (a) stores a timeline record of each patrol unit's various geographic locations; and (b) is thereby enabled to identify a predetermined number of other patrol units that are most geographically proximate to the patrol unit in probable danger.
Id. at 5:28-40 (emphasis removed).
Once the nearby units have been identified, "alert notifications are sent" (324), a "Chat room is opened on screen of 5 closest units" (328), and a "Map is opened on screen of 5 closest units indicating location of unit in danger" (330). '965 Patent, Docket No. 38-17, Fig. 3.
2. The Figure 4 EmbodimentImage materials not available for display.
'965 Patent, Docket No. 38-17, Fig. 4.
Figure 4 illustrates a process for identifying nearby units in response to an initial alert that identifies a geographic area — as opposed to a single point — at the outset. In the process shown in Figure 4, the person initiating the alert "selects geographic area on map" (402) along with a text request for emergency assistance. Id. The process shown in Figure 4 does not set a particular number of units to be alerted and does not sort units by relative proximity. It does, however, use the same kind of data as the Figure 3 process, to
"identif[y] all units in location database" (408). Id. As a separate data input, Figure 4 reflects that "[a]ll units report their location to the CSP every 15 seconds" (410). Id.
The description of the process illustrated in Figure 4 makes explicit that, even when there is no limitation on the number of responding units, the mechanism for determining whether units are within the designated geographical area entails ascertaining vehicle locations:
At a step 408, in response to the "geographic communication" message, the CSP automatically: (a) receives and stores a record of the "geographic communication" message in association with such patrol unit's reported then-current geographic location; and (b) executes a software application for identifying all other patrol units that are then-currently located within the officer's specified geographic area (e.g., by analyzing the AVL information). As shown at a step 410, through the network 102, the patrol units report their respective then-current geographic locations to the CSP at a periodic rate (e.g., once every 15 seconds), as discussed hereinabove in connection with the step 320 (FIG. 3).
'965 Patent, Docket No. 38-17, at 6:52-64 (emphasis added).
3. Other Embodiments
Additional portions of the patent specification expand upon and suggest variations in the process for identifying units within a geographic area, noting that different types of units (not just patrol cars) could be alerted:
Responsive to the prompt, one or more second mobile units within a geographic area associated with the location are determined (1006). For example, the second units can include one or more of mobile patrol units 118, 120, 122, 124, 126 and 128 such as police cars, fire department vehicles, ambulances and/or other emergency vehicles. In some implementations, second units may not be located in car, but can be land-based units or can be included with or as a mobile application on a cell phone or other mobile device associated with a user.
Id. at 9:43-52.
The specification also hypothesizes variations in the manner of identifying and prioritizing vehicles, stating that "[d]etermining the one or more second mobile units within a geographic area can be based on a distance of the second mobile units from the first unit, an expected response time, or other factors." Id. at 9:52-55.
It should be noted that the embodiments illustrated in the figures and the description dovetail with the arguments that Kologik advanced earlier in this litigation to refute Defendants' contention that both of Kologik's patents were directed to abstract ideas. At that stage of proceedings, the automated process of determining which patrol units (or other responders) were closest to the reported emergency was the centerpiece of Kologik's argument for the asserted value of the claimed innovations:
Indeed, the inventions in the '768 and '965 Patents revolutionized existing technology for communicating with law enforcement, which largely depending on the use of intermediaries, had potentially deadly limitations on contacting the most geographically proximate emergency services, and were limited in the types and content of information that could be provided.
Opp. to Defendants' Motion for Judgment on the Pleadings, Docket No. 196, at 21 (emphasis added). ii. The Method of the Accused InForce911 Computer Program
The parties do not dispute that In-Force911 functions differently than any of the embodiments described in the '965 Patent specification. This difference is not simply a matter of varying the parameters for selecting which units, or types of units, will be alerted. Rather, the In-Force911 method eschews any automated process for ascertaining the locations of potential responders. There is no auto vehicle location ("AVL") component or associated database. Nor is there anything in the InForce911 process that ascertains or records, whether in real time or at any identifiable interval, any actual locations of particular units.
As noted above, the embodiments described in the patent specification should not be read as limitations for the asserted claims of the '965 Patent. But the comparison is useful in understanding the method employed by the accused computer program.
The intervals at which patrol units report their locations, for example, might be set to increments of 30 seconds, or even 5 minutes. The number of patrol units to be selected might be increased from 5 to 15, or the types of units could be differentiated — to distinguish between fire trucks and police cars. See, e.g., '965 Patent, Docket No. 38-17, at 16:9-12 ("[Dependent Claim] 14. The method of claim 1 wherein the one or more second mobile units are associated with emergency service units.").
Defendants' non-infringement contentions with respect to the '965 Patent underscore this point:
Claim 1 is not infringed, either directly or indirectly, literally or under the doctrine of equivalents, for at least the following reasons: (a) Claim 1 requires the limitation "identifying one or more second mobile units within a geographic area associated with the location." In Force911 does not infringe literally or under the doctrine of equivalents, either directly or indirectly, claim 1 because In Force911 does not allow for the identifying one or more second mobile units within a geographic area associated with the location. In Force911 provides no information on the location of any mobile units.
Defendants' May 3, 2019 Non-Infringement Contentions, Docket No. 303-9, at 4-5 (emphasis added).
Defendants' fact witnesses confirm that InForce911 does not include a process that locates units, as Kologik acknowledges in its submissions:
Defendants' fact witnesses identified an apparent noninfringement theory involving GPS. Brandon Flanagan testified in his deposition that he believes that the accused software does not infringe because "In Force 911 does not utilize GPS to geo locate the nearest patrol units." Ex. 6, B. Flanagan Apr. 20, 2022 Tr., 53:15-54:10 ("A. I believe that the In Force 911 technology does not infringe on the patents. Q. Why? A. Because In Force 911 does not utilize GPS to geo locate the nearest patrol units. Q. Any other reason? A. None that I can think of at this time. Q. And if asked to testify on this subject at trial, that is the information that you would provide? ... A. I imagine so."); see also Ex. 10, D. Flanagan Apr. 19, 2022 Tr., 41:12-42:17 ("I think that In Force Technology has or never has tracked police officers via location. And in In Force911, by design and for many reasons, never covered a police officer's physical address. It was unnecessary. And again, In Force Technology provides emergency alert communications to every law enforcement officer. That's my understanding.").
Kologik's Motion for Summary Judgment, Docket No. 302, at 15-16 (emphasis added).
Notably, Defendants contend that the absence of geolocation methods is a commercially valuable feature, as opposed to a deficiency, in the InForce911 product. Responding to questions from Defendants' counsel, one of these witnesses expanded on the reasons why the InForce911 product lacks any step to determine the locations of particular units:
Q Okay. Do you agree that officer location mapping was part of IN FORCE911?
A [Brandon Flanagan] No. As I recall, that was a part of the ZCO platform that previously existed and not part of the specification that is In Force had set forth.
Q Do you recall any reasons why you would not employ that bullet point officer location mapping [in] IN FORCE911?
A Because at In Force Technology, we felt as though that officer location mapping, as it's put here, is an inherent design flaw by eliminating the scope to which police officers can receive an alert at any point in time. Rather, we designed the software so that all officers could receive an alert regardless of their duty status or duty location, as an example. And moreover, know that in the Northeast, based on my background and more importantly, my father's background with the Massachusetts State Police, that police unions in the Northeast were vehemently and continue to be vehemently opposed to automatic vehicle location services or otherwise known as GPS services.
Q Thank you.
A We knew that that would be, yes, a design flaw.
Flanagan Deposition Transcript, Docket No. 306-7, at 329:4-330:8.
Kologik does not dispute Defendants' contention that the InForce911 system lacks any geolocation process. See Kologik's Motion for Summary Judgment, Docket No. 302, at 16 ("[F]or the purpose of this motion, Kologik will assume, as the Flanagans testified, that InForce911 does not utilize GPS to geo locate the nearest patrol units or 'track police officers via location.'").
Defendants' contention that InForce911 lacks any geolocation process is consistent with Dr. Amodeo's review of the In-Force911 source code. Cf. AstraZeneca LP v. Apotex, Inc., 633 F.3d 1042, 1053 (Fed. Cir. 2010) (finding "no error in relying on uncontested expert testimony to explain how the invention described in the intrinsic record functions").
The Amodeo Report purports to describe the processes employed by the accused InForce911 program. In the Amodeo Report's discussion of the disputed step, however, only paragraph 56 actually references the processes used by the In-Force911 program. Paragraph 57 — which describes the ways some police departments are divided into precincts — contains no reference to the InForce911 product or its source code. The Amodeo Report's entire discussion of the disputed step (with added emphasis on the portion that describes the InForce911 product) is as follows:
c. responsive to the prompt, identifying one or more second mobile units within a geographic area associated with the location;
56. [REFERENCES TO SOURCE CODE REDACTED] The stored procedure queries the database to identify officers belonging an agency associated with the school that the alert originated from, and the data is saved by
[REFERENCES TO SOURCE CODE REDACTED]
57. An agency in the In Force 911 is typically a local police department (see, e.g., DEF000573-578, which outlines the policy for the use of the Law Enforcement app for the Worcester Police Department). Police departments are divided in precincts or districts, each defining a specific geographical area where the officers are located. This is exemplified by the map of the 11 districts of the Boston Police Department, shown below.
Image materials not available for display.
Amodeo Report, Docket No. 303-4, ¶¶ 56-57 (emphasis added).
Accordingly, paragraph 56 is the only place in the Amodeo Report that asserts expert opinion as to the disputed step. Having quoted the language of Claim 1(c), the Amodeo Report describes the operation of InForce911 as follows: "The stored procedure queries the database to identify officers belonging an agency associated with the school that the alert originated from, and the data is saved ...." Id. ¶ 56 (emphasis added). In other words, the Amodeo Report confirms that, apart from identifying which agency the officers belong to, there is no further process for determining the actual location of the officers to be notified.
In sum, the parties agree that when InForce911 receives an alert, the program searches a database for all registered units of the police department associated with the location. See Kologik's Rebuttal Statement of Material Facts, Docket No.
314-1, at 10 ("The purpose of the In Force911 software is to connect schools with law enforcement covering the geographic area in which the school is located.").
d. Analytic Framework
Analysis of an infringement allegation is a two-step process. "First, the trial court determines the scope and meaning of the asserted claims." Searfoss v. Pioneer Consol. Corp., 374 F.3d 1142, 1148 (Fed. Cir. 2004). "Second, the claims as construed by the court are compared limitation by limitation to the features of the allegedly infringing device." Id. The patent holder bears the burden of proving that the allegedly infringing product satisfies each limitation of the asserted patent claim. See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1583, 1535 (Fed. Cir. 1991).
As to step one, the language of a claim defines the boundary of its scope. See Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002). Accordingly, "the claim construction inquiry... begins and ends in all cases with the actual words of the claim." Id. (quoting Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998)). In performing claim construction, "the words of a claim 'are generally given their ordinary and customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "[A] court must presume that the terms in the claim mean what they say, and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning of claim terms." Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir. 1999); see also DSW, Inc. v. Shoe Pavilion, Inc., 537 F.3d 1342, 1347 (Fed. Cir. 2008) ("[A]bsent contravening evidence from the specification or prosecution history, plain and unambiguous claim language controls the construction analysis.").
The Court of Appeals for the Federal Circuit has noted two exceptions to this general rule, neither of which are relevant to this case. See generally Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) ("There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of the claim term either in the specification or during prosecution.").
As to step two, application of a construed claim to the accused product is a "factual determination." Dow Chem. Co. v. United States, 226 F.3d 1334, 1338 (Fed. Cir. 2000). Summary judgment of non-infringement is appropriate when, "on the correct claim construction, no reasonable jury could have found infringement on the undisputed facts or when all reasonable factual inferences are drawn in favor of the patentee." Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1353 (Fed. Cir. 2001).
e. The Contours of Kologik's Infringement Claim
i. The Patent is a Method Patent
As a starting point, it is critical to note that the patent in question is a method patent. As the '965 Patent recites, "What is claimed is: 1. A method comprising...." '965 Patent, Docket No. 38-17, at 15:9-10.
Federal courts examining patent cases "draw a clear distinction between method and apparatus claims for purposes of infringement liability." Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 576 F.3d 1348, 1363 (Fed. Cir. 2009). As the Supreme Court has noted, "[a] method patent claims a number of steps; under this Court's case law, the patent is not
infringed unless all the steps are carried out." Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915, 921, 134 S.Ct. 2111, 189 L.Ed.2d 52 (2014); see also Roberts Dairy Co. v. United States, 530 F.2d 1342, 1354 (Ct. Cl. 1976) ("It is well established that a patent for a method or process is not infringed unless all steps or stages of the claimed process are utilized.").
In other words, to prove infringement Kologik must show that all steps of the patented method are performed by the accused software. The requirement that all steps be incorporated is also implicit in the claim language itself, which begins with the word "comprising." This open-ended signal means that the invention can include additional elements, so long as it includes all the elements listed in the claim. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 812 (Fed. Cir. 1999) ("[T]he signal "comprising" accommodates additional variables, provided that all of the elements stated in the claim are present.").
As discussed below, the central dispute before the Court is whether the accused software employs one particular step of the method taught in the '965 Patent, Claim 1(c).
ii. The Method is for a Computerized System
Another essential prefatory point is that the claims at issue in this case relate to a computerized and automated system. Although Claim 1 does not expressly refer to computers, Kologik's counsel conceded this point at oral argument. Counsel's concession is fully consistent with the intrinsic evidence of the patent itself. Most obviously, the '965 Patent is entitled "Method, System and Computer Program Product for Law Enforcement." It is also telling that the '965 Patent abstract begins with the sentence: "Methods, systems, and apparatus include computer programs encoded on a computer-readable storage medium, including a method for providing information." '965 Patent, Docket No. 38-17, Abstract.
That this is a computer-based method is also central to Kologik's position — which was developed at an earlier stage of the litigation — that the '965 Patent teaches a useful invention, and not just an abstract idea. See Opp. to Defendants' Motion for Judgment on the Pleadings, Docket No. 196, at 17. In Kologik's words, the '965 Patent "offers a specific technological solution to a technological problem." Id. at 13. Amplifying this point, Kologik argued that "conventional law enforcement computer systems ... involved the use of intermediaries to facilitate communications during an emergency" and that "[t]he '965 Patents solve[d] the inherent problems" of such an intermediary system by "'enabling a direct communication link.'" Id. at 14 (emphasis in original).
The Court accepted Kologik's contentions — with regard to the sufficiency of its pleadings — and distinguished between the '768 Patent and the '965 Patent. Specifically, the Court found that "the Asserted Claims of the '965 Patent are more appropriately characterized as directed to an improvement to computer functionality ... and communication systems in order to better facilitate law enforcement activities." Report and Recommendation, Docket No. 202, at 37 (alteration in original) (citation and quotation marks omitted). On this basis, the Court rejected Defendants' contention that the '965 Patent was directed to an abstract idea or concerned subject matter that was not patent-eligible. Id. at 30-37.
The Court's ruling underscores that the very question of patent-eligibility rests on the Kologik's assertion that the Claims of
the '965 Patent concern a computerized process. It would be preposterous to suggest that one could obtain patent protection for a non-automated process whereby a police department dispatcher, after receiving a report of an emergency, broadcasts an alert directing nearby units to respond to the scene and instructing them to tune to the same frequency (or to open a shared electronic chat) so they can communicate directly amongst themselves. Such a claim would fail at the very threshold of the two-step framework outlined in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208, 218, 134 S.Ct. 2347, 189 L.Ed.2d 296 (2014) ("We must first determine whether the claims at issue are directed to a patent-ineligible concept. We conclude that they are: These claims are drawn to [an] abstract idea[.]").
The Amodeo Report explicitly reaffirms that the alleged infringement is based on a claim about the operation of the In-Force911 software:
74. Based on my review of the source code, my testing of the executable version of the software, and my review of the documents listed in section VI.A of my report, in my opinion, the In Force 911 software infringes all of the asserted claims of the '965 Patent.
75. Each step of the asserted claims is performed by the software; therefore, each act of infringement is committed by the entity running the software (i.e., In Force Technology). This direct infringement takes place every time a Primary alert is sent and received, whether for a real emergency or as part of a drill.
Amodeo Report, Docket No. 303-4, ¶¶ 74, 75. (emphasis added).
In light of Kologik's explicit acknowledgement that the method at issue is a computer-based method, it is appropriate to consider the preamble language of the '965 Patent as limiting the asserted claims to computer-based methods or processes. As the Federal Circuit has noted, "While it is true that preamble language is often treated as nonlimiting in nature, it is not unusual for this court to treat preamble language as limiting[.]" Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006). "[T]he preamble is regarded as limiting if it recites essential structure that is important to the invention or necessary to give meaning to the claim." Id. (citations omitted).
To be clear, this point — that the patent at issue teaches a computerized/automated method — is the sole issue as to which it is necessary to consider evidence outside the body of the claim as a limitation on the scope of the patent. Other sections of this report quote from and discuss the patent's description of illustrative embodiments of the claimed invention, and such references to the specifications are helpful in framing the issues to be decided. But in every instance — except this one — the ultimate issue is one that can and must be decided based only upon the words of the body of the claim.
iii. Kologik Alleges Literal Infringement
In this case, Kologik alleges only literal, direct infringement, and has not alleged liability under the doctrine of equivalents. Kologik's counsel acknowledged as much at oral argument on the present motions. This acknowledgement is consistent with Kologik's submissions in this case. See, e.g., Amodeo Report, Docket No. 303-4, ¶ 75 ("This direct infringement takes place every time a Primary alert is sent and received, whether for a real emergency or as part of a drill." (emphasis added)).
Because Kologik has not alleged infringement under the doctrine of equivalents, it must show literal infringement, meaning "every limitation set forth in a
claim must be found in an accused product, exactly." Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1319 (Fed. Cir. 2015) (quoting Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995)); see also Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998) ("[A] literal infringement issue is properly decided upon summary judgment when no genuine issue of material fact exists, in particular, when no reasonable jury could find that every limitation recited in the properly construed claim either is or is not found in the accused device.").
f. Step 1: Claim Construction
As noted above, given the singular focus of the pending summary judgment motions, and given the absence of any prior claim construction with respect to the disputed language of Claim 1(c), I invited the parties to submit supplemental materials addressing the construction of the words of that portion of the claim. See Docket No. 338, at 3.
Kologik objected to the Court's invitation, contending that Defendants' failure to designate their own experts earlier in the litigation should foreclose Defendants from arguing about construction of the terms of Claim 1(c). See Kologik's Suppl. Claim Construction Brief, Docket No. 340, at 2-5. Kologik's effort to manufacture a "waiver" or forfeiture from Defendants' relatively sparse submissions is unavailing. From early in the litigation, Defendants stated their position with adequate clarity to inform Kologik of their theory of non-infringement. As Defendants wrote:
Claim 1 is not infringed, either directly or indirectly, literally or under the doctrine of equivalents, for at least the following reasons:
(a) Claim 1 requires the limitation "identifying one or more second mobile units within a geographic area associated with the location." In Force911 does not infringe literally or under the doctrine of equivalents, either directly or indirectly, claim 1 because InForce911 does not allow for the identifying one or more second mobile units within a geographic area associated with the location. InForce911 provides no information on the location of any mobile units.
Defendants' May 3, 2019 Non-Infringement Contentions, Docket No. 303-9, at 4-5.
In any event, it is well-within the Court's discretion, and entirely appropriate in this case, to consider additional claim construction arguments as a particular dispute comes into focus. It is true, of course, that no claim construction is required if a dispute can be resolved by applying a plain and ordinary meaning to a term. See O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed. Cir. 2008). The potential need for claim construction arises, however, "[w]hen the parties raise an actual dispute regarding the proper scope of these claims." Id. And it is well-settled that "[d]istrict courts may [also] engage in a rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves." Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002). Indeed, it is also permissible that "at the summary judgment stage, [i]n the event that claim construction is required, it will be done without conducting a Markman hearing." Siemens Gamesa Renewable Energy A/S v. Gen. Elec. Co., 605 F. Supp. 3d 198, 205 (D. Mass. 2022) (alteration in original) (internal quotation mark omitted). i. Plain and Ordinary Meaning
Kologik aptly notes that "the words of the claims define their scope," that "[c]laim construction begins with the 'words of the claims themselves,'" and that "there is a 'heavy presumption' that those words 'be given their ordinary and customary meaning.'" Kologik's Suppl. Claim Construction Brief, Docket No. 340, at 5 (quoting Aventis Pharm. Inc. v. Amino Chems. Ltd., 715 F.3d 1363, 1373 (Fed. Cir. 2013)).
It is also a truism that, ordinarily, the relevant understanding of disputed terms is that of a person of ordinary skill in the art ("POSA"). However, even though Kologik's submissions make repeated references to the views of a POSA, most of the terms at issue here are not specific to computers. As Kologik acknowledges, "Mr. Amodeo's opinion was based on the plain meaning of the term." Opp. to Defendants' Motion for Summary Judgment, Docket No. 314, at 10. Indeed, counsel for Kologik reiterated at the hearing that Mr. Amodeo was not applying a meaning of the contested terms that is particular to the understanding of a POSA, as opposed to a member of the general public.
The Amodeo Report suggests that, in this case, the relevant standard for a POSA in this case is as follows:
Considering the sophistication of the technology involved, as well as the educational background and experience of those working actively in the field, I came to the determination that a person of ordinary skill in the art has a Master's degree in computer science or a related field and two years of experience, a bachelor's degree in computer science or a related field and four years of experience, or eight years of experience in computer science or a related field.
Amodeo Report, Docket No. 303-4, ¶ 17.
Here, the critical words are those of the disputed Claim 1(c): "responsive to the prompt, identifying one or more second mobile units within a geographic area associated with the location." '965 Patent, Docket No. 38-17, at 15:18-20.
There does not appear to be any controversy about the first four words, "responsive to the prompt," which indicate that the disputed step is performed only after the preceding steps (starting with a prompt) have commenced the process. Nor is there any disagreement that the last four words, "associated with the location," are descriptive of the "geographic area" in question. Nor, finally, is there any dispute about the meaning of "one or more second units." The term "second" is used to describe units other than the "first unit," i.e., the unit that issues the initial prompt.
It is primarily in the embodiments described in the specification that one gains an understanding that such "associat[ion]" can arise in a variety of ways, such as by the program identifying the location from which a prompt issued, or by a human user specifying a geographic area on an interactive map. See '965 Patent, Docket No. 38-17, at 4:55-5:9 (officer making a stop); 6:28-44 (officer designating an area).
The disputed terms here are "identifying" and "within a geographic area." Although both parties agree that these words should be construed based on their plain and ordinary meaning, each party insists that the other party's view of these terms is flawed, and each contends that the other party distorts the words' plain and ordinary meaning. Inescapably, the question of claim construction here turns on the Court's reading of the plain and ordinary meaning of the claim language.
We begin with the ordinary meaning of the term "identifying." If we look to a widely used dictionary, we see several possible meanings for the verb "identify," of
which the first two are potentially relevant:
Identify ... v. -fied, -fying, -fies—tr. 1.
To establish the identity of. 2. To ascertain the origin, nature, or definitive characteristics of.
Identify, The American Heritage Dictionary (4th ed. 2006).
Inasmuch as the first definition refers to establishing "the identity of," the first two given definitions of the word "identity" are also relevant:
Identity ... n., pl. -ties 1. The collective aspect of the set of characteristics by which a thing is definitively recognizable or known: "If the broadcast group is the financial guts of the company, the news division is its public identity" (Bill Powell). 2. The set of behavioral or personal characteristics by which an individual is recognizable as a member of a group.
Identity, The American Heritage Dictionary (4th ed. 2006).
By themselves, these definitions do not answer the question before the Court. But they provide some helpful context.
The first point to note is that, as a transitive verb, "to identify" (and the present participle "identifying") suggests an active step that requires a direct object. Thus, we can only reasonably speak of a computer program that "identifies" certain units (in this case, the units are usually police cars or patrol officers) to be included in a group chat if the program performs some act of selection or differentiation of those units. It is easiest to illustrate this distinction by offering a counterexample: While a police radio general bulletin may reach multiple units, one could not reasonably speak of a conventional radio broadcast as "identifying" the recipients of the broadcast. That is because the radio broadcasts can be received by anyone with access to the radio frequency. The term "identifying" implies some affirmative step beyond merely making communications available.
The second point is that "identifying" necessarily implies reference to a "set of characteristics by which a thing is definitively recognizable or known." The nature and breadth of the relevant set of characteristics is context specific. Colloquially, we may say that a particular human was "identified as a member of some defined group" (for instance, as an American, as a member of the armed services, etc.), or that a particular human was "identified as a particular individual" as denoted by a name or rank. But without some controlling set of characteristics, the term "identifying" loses its meaning. One identifies a person or thing as something.
It is evident, therefore, that the plain meaning of "identifying" within Claim 1(c) of the '965 Patent, must be understood in terms of identifying something ("one or more second units") by reference to some relevant characteristic. The relevant characteristic, in this instance, is explicitly set forth in the Claim, namely: "within a geographic area associated with the location." Accordingly, to identify units "within a geographic area," there must be some source of information about the location of those units. Given that some or all of the units in question are mobile — such as police cars — it seems likely (although it is unnecessary to reach this point here) that a process for identifying units within a geographic area would need to employ some means of updating location information. In short, the plain words of Claim 1(c) necessarily imply that a person (or a computer program) cannot be said to "identify" something as being "within a geographic area" unless there is some source of information about the location of the thing in question.
As discussed below, one can hypothesize a variety of different systems and types of information that could be used determine the locations of particular units.
At oral argument, Kologik's counsel argued against reading the claim language "identifying ... within a geographic area" to require any means of ascertaining where units are located. Kologik's counsel contended that doing so would amount to an improperly narrow construction of the Claim language. In counsel's terms, such a reading would add an unwarranted word, "only," to the Claim limitations. Indeed, Kologik's counsel argued that requiring any minimum amount of information about the location of the units in question would impermissibly amend the claim to read: "identifying ... units only within a geographic area." This argument does not hold water. Whether or not the word "only" is added, the only fair plain meaning of the term "identifying ... within a geographic area" is that the units must be identified as possessing the characteristic of being "within a geographic area." Claim 1(c) is not satisfied if units are identified by some characteristic other than location "within a geographic area."
In effect, Kologik's proposed reading would render superfluous the word "within." What's more, it would render the term "identifying" all but meaningless. The term "identifying" necessarily entails identifying something by reference to a specified characteristic. And in this case the relevant characteristic is whether a unit is "within a geographic area." Adopting Kologik's proposed reading would strip this important limiting language from the Claim. See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) ("A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so."); Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1383 (Fed. Cir. 2014) (vacating district court claim construction that effectively read a word out of the claims).
I find that the plain and ordinary meaning of "identifying ... within a geographic area" requires "identifying" particular units based on the characteristic of being "within a geographic area." The plain meaning of these terms requires access to some form of information about the location of the units to be identified.
ii. Intrinsic Evidence
The patent specification, as well as the prosecution history, is intrinsic evidence that may be considered as context in determining the plain and ordinary meaning of a term. See, 415 F.3d at 1313.
As discussed above, Figures 3 and 4 of the '965 Patent specification illustrate embodiments of Claim 1(c). These figures depict embodiments in which unit location information is continuously updated and stored in a database and in which such location information is used to identify units based on proximity to the location of the emergency. These embodiments align with the plain and ordinary meaning of the terms "identifying" and "within a geographic area."
Kologik correctly notes, however, that the teaching of Claim 1(c) is broader than the embodiments described in the patent specification.See Thorner v. Sony Comput.
In Kologik's words:
Kologik does not dispute that the bulleted quotations in Paragraph 14 are quotations from the specification of the '965 Patent. Kologik disputes that these quotations are "examples of what the limitation 'identifying one or more second mobile units within a geographic area associated with the location' means." They are not Kologik further disputes that these quotations constitute support for importing limitations into the asserted claims, for Defendants' arguments, or for the relief sought in Defendants' Motion.
Kologik's Statement of Disputed Facts, Docket No. 314-1, at 7.
put. Ent. Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012) ("The patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope."). On their face, those embodiments described in the '965 Patent do not disavow or explicitly limit the plain and ordinary meaning of the terms used in Claim 1(c).
The prosecution history of the '965 Patent provides little insight, although it does reinforce the observation that the word "identifying" suggests an active process. As originally submitted, the word "determining" was used where "identifying" now appears. The prosecution history does not include any explanation for the change and there is no suggestion that the USPTO examiner challenged the original wording or offered any resistance to the change. See File Wrapper for Patent '965, Claims, ¶ 1 (Jan. 29, 2016), https://patentcenter.uspto.gov/applications/14192369/ifw/docs?application=. Indeed, the original wording ("determining") occasionally appears in the specification of the patent itself. See, e.g., '965 Patent, Docket No. 38-17, Figs. 10, 11 ("Responsive to the prompt, determine one or more second mobile units within a geographic area associated with the location."). This change, and the lack of challenge to the change, shows that throughout the patent history, Claim 1(c) utilized a transitive verb.
Although the parties did not submit the file wrapper as an exhibit, this Court has taken judicial notice of the file wrapper, which is publicly available on the USPTO website. See Horizon Meds. LLC v. Dr. Reddy's Lab'ys, Inc., No. CV 15-3324 (SRC), 2019 WL 6907531, at *5 n.4 (D.N.J. Dec. 18, 2019) (taking judicial notice of documents from the file wrapper where only certain other documents from the wrapper had been submitted by the defendant).
In one of its arguments, Kologik suggests that Claim 1(c) should be read expansively based on particular language from the specification. Specifically, Kologik notes that the narrative description of Figure 10 recites that Claim 1(c) can be accomplished by considering the distance, response time, "or other factors." See '965 Patent, Docket No. 38-17, at 9:52-55 ("Determining the one or more second mobile units within a geographic area can be based on a distance of the second mobile units from the first unit, an expected response time, or other factors."). Kologik argues that because these "other factors" are undefined, the patent specification is not limited to a determination based on actual location. See Opp. to Defendants' Motion for Summary Judgment, Docket No. 314, at 9 ("Here, the specification expressly teaches that one need not determine the second mobile unit(s) within a geographic area based on distance from the first unit.") (emphasis in original).
Even if we accept Kologik's interpretation of the language in the specification, this does not change the language of Claim 1(c), which teaches "identifying ... units within a geographic area." It is axiomatic that while a patent specification may
It is not evident that the language Kologik cites will bear the interpretation Kologik suggests. It is equally plausible that, like distance and response time, the "other factors" are simply used to prioritize which units should be alerted to respond, among all the units have already been identified within a geographic area (e.g., send fire trucks to a reported fire).
provide relevant intrinsic evidence, the specification does not substitute for the patent claims themselves. Cf. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326 (Fed. Cir. 2002) ("[T]he claims must be read in view of the specification, but limitations from the specification are not to be read into the claims." (citations omitted)).
This principle operates in both directions. For example, as discussed above, the '965 Patent cannot be narrowly read to require that an infringing invention employ the precise mechanism for locating units (i.e., GPS) merely because that mechanism is employed by certain embodiments. So, by the same token, the "other factors" language from the specification cannot be employed to alter the claim limitation of "identifying ... units within a geographic area" such that an infringing invention need not determine the actual location of units.
As required both by a common-sense reading of the specification and by the legal principles discussed above, the specification does not (and legally cannot) propose abandoning the claim limitation of "identifying" units "within a geographic area."
iii. Extrinsic evidence
As Defendants have not produced any expert testimony, the primary extrinsic evidence to be considered in claim construction is the opinion of Kologik's expert, Dr. Amodeo.
As the Court of Appeals for the Federal Circuit has noted, "extrinsic evidence in general, and expert testimony in particular, may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language." Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).
As noted above, with respect to the disputed step, Claim 1(c), the Amodeo Report fails to directly address the meaning of "identifying ... units within a geographic area." Moreover, the Amodeo Report says nothing about the contested claim language that can fairly be identified as a reflection of special expertise. There is no suggestion that a POSA with expertise in computer science would understand the words "identifying ... units within a geographic area" to carry any specialized meaning particular to that field. Indeed, Kologik acknowledges that "[Dr.] Amodeo's opinion was based on the plain meaning of the term." Opp. to Defendants' Motion for Summary Judgment, Docket No. 314, at 10.
Kologik submitted a supplemental declaration from Dr. Amodeo ("Amodeo Declaration"), in an effort to rebut Defendants' suggestion, which was made in some of their submissions, that the contested step in the method, "identifying ... units within a geographic area" necessarily requires "tracking" the location of the units. Amodeo Declaration, Docket No. 314-12, ¶ 8 ("The asserted claims of the '965 Patent do not recite a limitation requiring tracking of the second mobile unit(s), and a person of ordinary skill in the art would not understand any recited claim language to require such tracking.").
Defendants' introduction of the term "tracking" into the discussion is potentially distracting. Neither Defendants nor Dr. Amodeo offer any definition of the term. In any event, the term "tracking" is not
There is nothing to suggest that the term "tracking" is a specialized term whose meaning would be understood differently by a computer engineer than a layperson. Accordingly, Dr. Amodeo's additional comment that a POSA would not understand the claim language to require tracking adds little to the discussion.
found in the limitations of the claim and so there is no need for the Court to determine what it might mean. In this respect, I accept the assertion in the Amodeo Declaration that "the asserted claims of the '965 Patent do not recite a limitation requiring tracking of the second mobile unit(s)."
In a day and age when GPS technology is all but ubiquitous, continuous location monitoring via GPS may be an obvious way in which a software program would go about ascertaining the location of particular police cars. That is, perhaps, one common understanding the term "tracking." But there are other means of locating cars and people, some of which involve near-instantaneous yet static location identifiers. See, e.g., In re Application of U.S. for an Order Authorizing Disclosure of Location Info. of a Specified Wireless Tel., 849 F. Supp. 2d 526, 533-35 (D. Md. 2011) (discussing differences between GPS location technology and cell-site location information). Indeed, one can readily envision a system that would identify the location of police vehicles on an ad hoc basis, only after an alert is received. This probably would not fit a colloquial understanding the term "tracking" but almost certainly would satisfy Claim 1(c), since it would "identify" units "within a geographic area."
It is even possible to hypothesize embodiments that could use entirely different approach to identifying the locations of particular units. One can imagine, for instance, a system that would identify a unit's location based upon patrol assignments — a database would note the areas where particular units are assigned to work during a given day or shift. Such a system would, at least arguably, provide a basis for "identifying ... units within a geographic area," yet it would probably not meet anyone's definition of "tracking."
This case does not require the Court to imagine all the possible embodiments that might employ the teaching of the '965 Patent. Rather, the Court is called upon to consider whether a particular process — the procedure used by the accused InForce911 software — employs each step of the claimed method. The Court is required to construe the disputed claim language only "to the extent necessary to resolve the controversy." Vivid Techs., Inc. v. Am. Science & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Ballard Med. Prods. v. Allegiance Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir. 2001) ("If the district court considers one issue to be dispositive, the court may cut to the heart of the matter and need not exhaustively discuss all the other issues presented by the parties.").
As noted above, the plain meaning of the term "identifying ... units with a geographical area" requires some source of information about the units' locations. Whether, and to what extent, such a process coincides with the parties' respective understandings of the term "tracking" is irrelevant.
iv. Final Claim Construction
Considering the language of Claim 1(c), as well as the intrinsic and extrinsic evidence discussed above, there is nothing to suggest that the terms "identifying" and "within a geographic area" require claim construction different from their plain and ordinary meaning. Accordingly, as discussed above, in Claim 1(c), the '965 Patent teaches a method of "identifying" particular units based on the characteristic of being "within a geographic area." By its terms, this requires access to some form of information about the location of the units being identified. A method that does not identify units based on such information does not infringe the '965 Patent.
g. Step 2: Comparing the Accused Device to the Claims of the '965 Patent
At the second step of the infringement analysis, the Court must apply the words
of the Claim, as properly construed, to the accused software. This step requires a comparison of the method taught by the '965 Patent to the particular method used by the accused InForce911 software.
First off, Kologik contends that whether a software program locates units by GPS is legally irrelevant. As to the narrow point, Kologik is undoubtedly correct; nothing in the Claim 1(c) requires the use of GPS as the means of identifying units within a geographic area. See Kologik's Motion for Summary Judgment, Docket No. 302, at 16 ("Nowhere does the claim require the use of GPS to identify the one or more second mobile units within a geographic area associated with the location."). But this does not answer the question of whether a method that contains no process whatsoever for determining the location of particular units can be said to employ the step of "identifying" units "within a geographic area."
Kologik's own submissions call into question its contention that InForce911 automatically performs the step of "identifying" units "within a geographic area." Earlier in this litigation, Kologik described its infringement contentions as follows:
The Accused In Force911 Technology performs the step of "responsive to the prompt, identifying one or more second mobile units within a geographic area associated with the location." For example, when the operator of the first unit sends an Alert, second mobile units corresponding to law enforcement users in the area are identified based on the location of the Alert: "All authorized officers who have been assigned a user account will be required to sign in to In Force911 on their cruiser MDT's at the beginning of every shift.... All Police Personnel with department-issued cell phones may be ordered by the Chief of Police or his designee to install the In Force911 software application on their issued devices.... When the department receives an In Force911 alert activation, the patrol supervisor should request that any available unit (F1 or F2 depending on location) respond to the location of the call for help."
Kologik's Amended Patent-Related Disclosures, Docket No. 320-2, at 6-7 (emphasis added).
In this formulation there is a human-mediated step in the InForce911 process which involves the intervention of "the patrol supervisor" who is directed to "request that any available unit (F1 or F2 depending on location) respond to the location of the call for help." Id.
At first blush, this human-mediated step appears to correspond to the claim limitation of "identifying one or more second mobile units within a geographic area associated with the location." This human-mediated step, however, is not the basis for Kologik's infringement claim. As noted above, Kologik's infringement claims are based on a computerized system, not on some kind of process that incorporates human-mediated steps.
Although Kologik's position has evolved to argue that InForce911 infringes when it sends an alert to all devices associated with a police department, it is worth highlighting this human-mediated step in the InForce911 program. Whereas the '965 Patent purports to use technology to efficiently deploy law enforcement resources during emergencies, InForce911 appears to rely on the pre-existing, conventional method of using patrol supervisors as intermediaries between the point of alarm and responding officers. In this respect, InForce911 fits Kologik's description of prior art technology, whereby "[c]onventional law enforcement computer systems[ ] involved the use of intermediaries to facilitate communications during an
emergency." Opp. to Defendants' Motion for Judgment on the Pleadings, Docket No. 196, at 14.
That the InForce911 method contemplates a non-automated step, whereby a "patrol supervisor" determines which units to assign to a particular emergency, suggests that there is a difference in purpose between InForce911 and the teaching of the '965 Patent. The '965 Patent teaches a computerized method that appears designed to streamline emergency response by automatically "identifying" and contacting the officers closest to the emergency. By contrast, the InForce911 program inherently relies on a patrol supervisor to determine which officers should be directed to respond to an emergency. This distinction suggests that the InForce911 software simply skips the step of "identifying... within a geographic area," rather than performing that step by different means.
Kologik does not equate the human-mediated step with Claim 1(c). Indeed, any such argument would fail of its own weight, since Kologik has accepted that all steps of the '965 Patent must be performed by computer. Without resorting to a doctrine of equivalents argument — which Kologik has disavowed — it makes no sense to equate an automated step with the intervention of a human "patrol supervisor." Kologik's position is that InForce911 infringes the '965 Patent even without the human-mediated step. In this argument, the human-mediated step ascribed to the InForce911 process is essentially supplemental to and separate from the infringing InForce911 software.
Kologik's ultimate position, as developed in the present cross motions, is that the accused technology infringes Claim 1(c) when it alerts all units of a police department — wherever those units may happen to be. Underpinning this position is an assumption that any particular police department will necessarily be assigned to, or associated with, a particular locality, which in Kologik's view is equivalent to a "geographic area." In Kologik's words: "In Force911 identifies mobile units 'within a geographic area associated with the location' by identifying all users of a law enforcement unit that is geographically associated with the location." Reply to Kologik's Motion for Summary Judgment, Docket No. 320, at 4 (emphasis added). Kologik's argument is that InForce911 practices the method taught in the '965 Patent when the InForce911 system receives a notification from a school and sends an alert to all units of a police department that is associated with the same town or city as the school.
i. Kologik's Expert Submissions Do Not Show Infringement
As noted above, Kologik points to expert testimony from Dr. Amodeo as support for its contentions. See Kologik's Motion for Summary Judgment, Docket No. 302, at 14-15 ("Kologik timely disclosed the Amodeo Report, which offers expert opinions and evidence showing that each element of each Asserted Claim is practiced by the accused software."). But scrutiny of that report reveals nothing, apart from conclusory legal characterizations, to support a finding of infringement.
Kologik suggests that Defendants' failure to hire their own expert undermines Defendants' motion for summary judgment of non-infringement. See Kologik's Suppl. Claim Construction Brief, Docket No. 340, at 8-9. Here, however, there is no dispute of material fact, and the contested terms in Claim 1(c) do not require the technical expertise of a POSA. The infringement question does not turn on resolving any conflicts of expert opinion.
The courts avoid stepping into a technical arena unaided by the testimony of an opposing expert, and generally leave a determination of expert credibility to the jury. See Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 683 (Fed. Cir. 2015) ("As a general rule, summary judgment is inappropriate where an expert's testimony supports the non-moving party's case.") (quoting Provenz v. Miller, 102 F.3d 1478, 1490 (9th Cir. 1996)).
Dr. Amodeo is the only expert before the Court, and his description of how the InForce911 product operates is consistent with Defendants' description.
To the extent that Dr. Amodeo describes the workings of the InForce911 software, Dr. Amodeo's opinion is sufficient to frame the issue for the Court. As noted above, in his report he describes the operation of the accused product as follows: "The stored procedure queries the database to identify officers belonging an agency associated with the school that the alert originated from...." Amodeo Report, Docket No. 303-4, ¶ 56. Dr. Amodeo's legal conclusions, however, stand on a very different footing than his factual descriptions of the InForce911 software, which are based on his review of the source code and documentation for the accused product.
Taken one step at a time, Dr. Amodeo's association of the term "identifying" with the phrase "[t]he stored procedure queries the database" may fairly be understood to reflect an informed, specialized understanding of a POSA. Amodeo Report, Docket No. 303-4, ¶ 56. After all, this is a computer program, and computer programs routinely query databases to identify sought-after information.
But the critical question is whether the InForce911 program queries the database for a set of characteristics that would identify "units within a geographic area." To state the obvious, any given database query might search for units based on an unlimited number of possible criteria. Some of these plainly would not amount to identifying something "within a geographic area." For example, a search by officer last name, by assigned car number, or by type of vehicle plainly would not amount to "identifying" a unit "within a geographic area."
The critical gap in Dr. Amodeo's analysis is that Claim 1(c) does not use the term "identifying" in isolation. The term "identifying" in Claim 1(c) is part of a clause that includes the parameter "within a geographic area." The Amodeo Report elides the plain and ordinary meaning of the conjunction of these terms. Instead, Dr. Amodeo seems to posit (although he does not say as much) that a law enforcement agency associated with a school will likely be located within the same geographic area as the school. This would imply that the agency's officers are located "within the geographic area" of the school.
Kologik's briefings on the issue underscore the point that the only sense in which the accused product can be said to "identify" units "within a geographic area" is that police departments in a particular town will ordinarily be linked with the schools in that town. Kologik describes the InForce911 system as follows:
As the evidence shows, the accused InForce911 software is sold in pairs—one version of the software to a school and the other to a local law enforcement agency in the geographic area associated with the school.
Opp. to Defendants' Mot. for Summary Judgment, Docket No. 314, at 10. This elevates a tautology — that the InForce911 software will notify the police department that is paired with a particular school — into an affirmative act of "identifying" units.
Dr. Amodeo purports to support his reasoning by asserting that "[p]olice departments are divided in precincts or districts, each defining a specific geographical area
where the officers are located." And he attaches a precinct map of Boston as an example. Amodeo Report, Docket No. 303-4, ¶ 57. This portion of the Amodeo Report is a non sequitur, as it does not reflect any analysis or review of the method employed by the InForce911 software. Dr. Amodeo does not claim any particular expertise with respect to police department operations. But — more importantly — having analyzed the source code the InForce911 software, Dr. Amodeo fails to point to any process in the accused InForce911 computer program that employs precinct or district divisions to define a specific geographical area where the officers are located. There is no reason to accord "expert" weight to this portion of Dr. Amodeo's submission. See generally Phillips, 415 F.3d at 1318 ("[C]onclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court.").
The Boston precinct map seems to be out of place. Dr. Amodeo's text refers to the fact that InForce911 was apparently used in a different city, Worcester.
It is doubtless true, as a matter of general knowledge, that some police departments — generally in larger towns and cities — are organized by precinct. But this is hardly a matter of specialized expertise in the field of computer science.
Although Dr. Amodeo equates notification of all units in a police department with "identifying" units "within a geographic area," he offers no suggestion as to how the accused software might know — at any given time — where the officers who are employed by a particular police department may be located. Counsel for Kologik contended at oral argument that it is reasonable to assume that some — perhaps even most — officers assigned to a police department will be found, on any given day, within the town where that department is located. But Dr. Amodeo's submissions do not even go this far. He pointedly ignores the critical words, "within a geographic area" and how they relate in Claim 1(c) to the word "identifying."
The Amodeo Report is consistent with Kologik's contentions, earlier in the case, which described the operation of the accused software. See Kologik's Amended Patent-Related Disclosures, Docket No. 320-2, at 6-7. Specifically, Dr. Amodeo's analysis of the source code for the InForce911 software does not contradict Kologik's previous admission that the InForce911 simply sends notice an alert to all units, which may include police cars with communication devices as well as police officers and senior officials who may carry department-issued cell phones. Indeed, Kologik admits as much in its most recent claim construction brief:
There is no inconsistency. In the law enforcement examples provided in both disclosures, the alert is sent to the officers within a police department. Compare Dkt. 306-2, Kologik Supp. Contentions, at 6-7 ("All authorized officers who have been assigned a user account will be require to sign in to In Force911 on their cruiser MDT's at the beginning of every shift ... All Police Personnel with department-issued cell phones may be ordered by the Chief of Police or his designee to install the In Force911 software application on their issued devices...") (emphases in original), ("After the timer counts down to '0' or SEND ALERT is selected, an Emergency Alert is sent out to: Law Enforcement All users in the organization who have been set up to receive alerts") (emphases added) with Dkt. 275-5, Amodeo Rep. ¶¶ 56-57 ("The stored procedure queries the database to identify officers belonging to an agency associated with the schoolthat the alert originated from ... An agency in the In Force 911 is typically a local police department ... [which] are divided in precincts or districts, each defining a specific geographical area where the officers are located.") (emphases added). In this example, the second mobile units are police officers and the accused system identifies officers within the identified geographic location (e.g., department or precinct) associated with the location of the emergency.
Kologik's Supplemental Claim Construction Brief, Docket No. 340, at 3 (alterations and emphasis in original).
In this example, Kologik conflates the disputed claim language "within a geographic area" with the phrase "within a police department." But the two phrases are not synonymous. To state the obvious, officers may be outside a geographic area and still be officers within a police department. Indeed, at oral argument, Kologik's counsel conceded that police officers may be assigned tasks — such as appearing at court hearings — that take them away from their home cities. Notifying all units in a police department is not the same thing as identified which units are within a particular geographic area.
Dr. Amodeo does assert, in conclusory fashion, that "[e]ach step of the asserted claims is performed by the software." Amodeo Report, Docket No. 303-4, ¶ 75. But he points to no factual basis, let alone relevant expertise, that would support this assertion. This renders that aspect of Dr. Amodeo's report no more helpful than the argument of counsel. Cf. SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1210 (Fed. Cir. 2013) ("In whole, Dr. Salomon's opinions are unhelpful to our analysis here. They are conclusory and incomplete; they lack any substantive explanation tied to the intrinsic record; and they appear to conflict with the plain language of the written description. Without a more detailed explanation of how Dr. Salomon formed his conclusions and why they conflict with the plain language of the specification, we must agree with the district court that Dr. Salomon's testimony deserves no weight.").
At best, Dr. Amodeo's characterization of the InForce911 software re-poses the key legal question in a slightly different form, leaving the Court to ask whether:
(a) "quer[ying] a database to identify officers belonging [to] an agency associated with the school that the alert originated from" [Dr. Amodeo's characterization]
is the same thing as:
(b) "identifying ... units within a geographic area associated with the location" [Claim 1(c)].
Compare Amodeo Report, Docket No. 303-4, ¶ 56, with '965 Patent, Docket No. 38-17, at 15:18-20.
Dr. Amodeo's submissions leave us where we started, facing the question of whether the system employed by the InForce911 software, which alerts all units associated with a police department — wherever those units may happen to be located at the time of the emergency — can be said to "identify" units "within a geographic area." This is not a question that turns on specialized knowledge of computer science. It is a legal question, which is resolved based on the construction of the language of the Claims of the '965 Patent. As the Court of Appeals for the Federal Circuit has instructed, "a court should discount any expert testimony 'that is clearly at odds with the claim construction mandated by the claims themselves[.]'" Phillips, 415 F.3d at 1318 (quoting Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998)). ii. The InForce911 Software Does Not Infringe the '965 Patent
The question before the Court is whether sending an alert to all officers who are on duty (wherever they may happen to be) and to all police officials who carry department issued cell phones (wherever they may happen to be) is the same thing as "identifying ... units within a geographic area." At oral argument, counsel for Kologik said "yes," arguing that patrol units will usually be found within the geographic boundaries of the town or city where they are employed. Defendant says "no," and notes that patrol units may go many different places in the course of their duties and that officers may carry department-issued cell phones when they are off-duty, even if they are far away on vacation. See Defendants' Motion for Summary Judgment, Docket No. 306, at 7 ("[T]he 'second mobile unit' can be located anywhere (even thousands of miles away vacationing in Florida for those officers receiving alerts via mobile phone) to receive an alert.").
Kologik did not dispute that such scenarios were possible with the InForce911 software. Instead, Kologik argued that the point is irrelevant. The reasonable assumption, Kologik contended, is that the majority of units associated with a police department at any given time will be found within the city served by that police department, which could be taken as a relevant "geographic area." Accordingly, Kologik argued, whenever the InForce911 program sends an alert to all units, it is reasonable to assume that "one or more" of those units will be found within the relevant geographic area. This, Kologik contends, is the same thing as "identifying" units "with a geographic area."
Kologik is entitled, at the summary judgment stage, to the benefit of all reasonable inferences from the evidence. See Carlson, 899 F.3d at 43. It is likely true that, as a matter of usual practice, particular police patrol cars are usually found within the confines of the city or town where the police department is located. Although the matter would likely require submission of relevant evidence at trial, it is appropriate, in considering Defendants' motion for summary judgment, to draw every inference in favor of Kologik, which is the non-moving party. Accordingly, the Court may accept, for present purposes, that Kologik is correct in suggesting that patrol officers and police officials, at least when they are on duty, are usually found within the boundaries of the municipality that employs them.
It should be noted that this point was raised by way of oral argument and hypothetical examples, rather than by presentation of evidence or by reference to specialized expertise. There are undoubtedly professional experts with ordinary skill in the art of police department organization and management, but neither party has offered any such testimony in connection with this case.
The Court should also accept, for present purposes, that notifying all units of a police department may work well enough to accomplish some of the purposes the patented invention (i.e., coordinating a response among multiple units and communicating relevant information about the location of an emergency). However, as discussed above, Kologik acknowledges that the InForce911 software does not accomplish all of the purposes of the patented invention, as human intervention may needed to assign units to a particular emergency. See Kologik's Amended Patent-Related Disclosures, Docket No. 320-2, at 6-7 ("When the department receives an In Force911 alert activation, the patrol supervisor should request that any available unit (F1 or F2 depending on location)
respond to the location of the call for help.") (emphasis omitted). That such human intervention is sometimes needed is powerful evidence that the task performed at Claim 1(c) of the method taught by the '965 Patent (i.e., "identifying... units within a geographic area") has not already been performed by the InForce911 software.
According to Kologik, identifying units by police department satisfies the terms of Claim 1(c), as counsel neatly summarizes:
Kologik's position is that, as required by the '965 Patent, In Force911 identifies mobile units "within a geographic area associated with the location" by identifying all users of a law enforcement unit that is geographically associated with the location.
Reply to Kologik's Motion for Summary Judgment, Docket No. 320, at 4 (emphasis added).
Even drawing all inferences in Kologik's favor, their argument is unpersuasive. Merely because the accused product accomplishes many of the same purposes as the '965 Patent, this does not mean the accused product employs every step of the method taught in the patent. Identifying all units associated with a particular police department may — as Kologik suggests — typically mean that some of the units identified will be found in the city or town where the school is located. But the same could be said for an email being sent to all members of a police department or even a radio broadcast to all units of a police department (i.e., an old-school "allpoints bulletin"). In no reasonable sense can it be said that the email server or radio broadcast has "identified" any one or more units as being "within a geographic area."
To put it another way, in the aftermath of an emergency, InForce911 operators would be unable to look at a log history for the software and identify which police officers, if any, were within the relevant geographic area when they received the emergency alert. The software simply does not incorporate that functionality.
The gist of Kologik's argument is that the phrase "identifying [units] within a geographic area" in Claim 1(c) should be understood to mean the same thing as "identifying units geographically associated with a location," regardless of whether particular units are actually within the geographic area, or not. Considering the plain and ordinary meaning of Claim 1(c), this interpretation is unworkable. The InForce911 software identifies units by a police department that is associated with a town or city. But it identifies those units, whether or not they are within such town or city. It cannot be said that "identifying" units "within a geographic area" means the same thing as "identifying" units that "may or may not be within a geographic area." Even if it is likely that many of such units will be found within the home city of the police department on any given day, it cannot be said that the InForce911 employs any step to "identify" officers on the basis of their being "within the geographic area."
In sum, the InForce911 system does not perform Claim 1(c). On the undisputed facts before the Court, "no reasonable jury could find that every limitation recited in the properly construed claim ... is ... found in the accused device." Innovention Toys, LLC v. MGA Ent., Inc., 637 F.3d 1314, 1319 (Fed. Cir. 2011) (quoting Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998)).
IV. Defendants' Invalidity Counterclaim
Among other counterclaims, Defendants seek a "Declaratory Judgment of Invalidity"
of the '965 Patent based on anticipation, obviousness, lack of enablement, and non-patent-eligible subject matter. Docket No. 57, at 37-38. Defendants also interpose essentially these same invalidity contentions as affirmative defenses. Id. at 31-32.
Kologik has moved for summary judgment as to the invalidity counterclaim.
Kologik notes that discovery is now complete and that Defendants have not identified any expert witness to address the question of obviousness. See Kologik's Statement of Material Facts, Docket No. 303, ¶ 12. Given that the Federal Rules of Civil Procedure mandate disclosure of expert testimony (Fed. R. Civ. P. 26(a)(2)), Kologik is correct in asserting that the state of the record, for purposes of summary judgment, is that Defendants have no expert testimony to offer in support of their invalidity counterclaim.
Kologik persuasively argues that Defendants' contentions about anticipation, obviousness, enablement, and patent-eligibility all turn on the knowledge and experience of a person of ordinary skill in the art ("POSA"), with relevant expertise in computer science. Kologik's Motion for Summary Judgment, Docket No. 302, at 4-8. The absence of such expert testimony, Kologik argues, effectively extinguishes Defendants' invalidity counterclaim. Id. at 4-14.
Kologik has the winning argument on this point. Given the burden that Defendants face in seeking to invalidate a patent that has been issued, expert testimony is essential. "Under the patent statutes, a patent enjoys a presumption of validity, see 35 U.S.C. § 282, which can be overcome only through clear and convincing evidence[.]" Eli Lilly & Co. v. Barr Lab'ys, Inc., 251 F.3d 955, 962 (Fed. Cir. 2001) (citing U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1563 (Fed. Cir. 1997)).
Expert testimony is generally essential in making any showing by "clear and convincing evidence" with respect to patent invalidity. This is true whenever the subject matter of the patent at issue is "sufficiently complex to fall beyond the grasp of an ordinary layperson." Proveris Sci. Corp. v. Innovasystems, Inc., 536 F.3d 1256, 1267 (Fed. Cir. 2008); see also Joyal Prod., Inc. v. Johnson Elec. N. Am., Inc., No. CIV.A.04-5172, 2008 WL 4630500, at *3 (D.N.J. Oct. 17, 2008) (granting summary judgment of no invalidity where defendant failed to present expert testimony to contest the validity of an electric motor patent).
This is not one of those rare cases in which the subject matter of a patent is so simple or familiar to a lay person as to require no expert testimony in assessing the state of the prior art, obviousness, or enablement. See generally Joyal, 2008 WL 4630500, at *3 ("Unlike the cases cited by Defendants, this case involves technology far more complex than that of a flower display, a plastic bag dispenser or a poultry feeder.... Johnson is required to present expert testimony at trial to prove invalidity. Lacking such testimony, their invalidity defenses and counterclaim will be dismissed.").
The '965 Patent deals with integration of multiple types of communication/information-sharing technology, all conducted by a software program. This subject matter is "sufficiently complex" to require the expertise of a practitioner in the field to ascertain whether, for example, the teachings of the patent would have been obvious to a practitioner. Cf. Automated Irrigation Controls, LLC v. Watt Stopper, Inc., 407 F. Supp. 3d 274, 294 (S.D.N.Y. 2019) (ruling that technology that was "multifunctional, involves digital and programmable features, and is designed to wirelessly synergize
and communicate with other products" constituted a complex technology "beyond the ken of a lay juror").
Like most invalidity contentions, Defendants' counterclaim involves factual questions, not just legal judgments. The Court has no special expertise from which to assess whether a particular invention was anticipated by prior art, to assess the obviousness of a claimed innovation, or to assess whether a written description is sufficient to enable a POSA to make and use an invention. Nor are these matters for simple lay judgment. Only a practitioner skilled in the relevant art could address such questions. Without such evidence, Defendants cannot prevail.
A patentee may move for summary judgment on validity based on a showing that the accused infringer "who bears the burden of proof at trial, failed to produce clear and convincing evidence on an essential element of a defense[] upon which a reasonable jury could invalidate the patent." Eli Lilly, 251 F.3d at 962 (Fed. Cir. 2001). "[B]ecause a patent carries a presumption of validity and a challenger must prove invalidity by clear and convincing evidence, a patentee need not present any factual evidence to prevail on a motion for summary judgment of validity." Cap Exp., LLC v. Zinus, Inc., 722 F. App'x 1004, 1008 (Fed. Cir. 2018). In other words, Kologik need not proffer affirmative evidence on the question of validity.
Claims of invalidity may arise as defenses against an infringement charge, or as an affirmative claim. In the matter at bar, Defendants raise invalidity in both ways. See Defendants' Answer and Counterclaim, Docket No. 57, at 31, 37-38.
Because Defendants have not offered expert support for their contention that the '965 Patent is invalid, Kologik is entitled to summary judgment on this point.
V. Kologik's Request for Sanctions
Kologik contends that Defendants have failed to comply with various court orders related to discovery, and requests that the Court impose sanctions pursuant to Rule 37 of the Federal Rules of Civil Procedure. See Kologik's Motion for Summary Judgment, Docket No. 302, at 17-20. Kologik argues that Defendants have been previously sanctioned in this case for discovery failures, and that dispositive sanctions are appropriate for subsequent offenses. Id.
Rule 37 provides that,
If a party or a party's officer, director, or managing agent—or a witness designated under Rule 30(b)(6) or 31(a)(4)—fails to obey an order to provide or permit discovery, including an order under Rule 26(f), 35, or 37(a), the court where the action is pending may issue further just orders. They may include the following:
(i) directing that the matters embraced in the order or other designated facts be taken as established for purposes of the action, as the prevailing party claims;
(ii) prohibiting the disobedient party from supporting or opposing designated claims or defenses, or from introducing designated matters in evidence;
(iii) striking pleadings in whole or in part;
(iv) staying further proceedings until the order is obeyed;
(v) dismissing the action or proceeding in whole or in part;
(vi) rendering a default judgment against the disobedient party; or
(vii) treating as contempt of court the failure to obey any order except an order to submit to a physical or mental examination.
Fed. R. Civ. P. 37(b)(2)(A).
In patent cases such as this, the Court looks to the First Circuit when considering questions of general procedural law, such as discovery sanctions. See In re Regents of Univ. of Cal., 101 F.3d 1386, 1390 n.2 (Fed. Cir. 1996) ("For procedural matters that are not unique to patent issues, we apply the perceived law of the regional circuit.").
As a starting point, the First Circuit has recognized that the law does not favor dispositive sanctions. "A default judgment is itself a drastic sanction that should be employed only in an extreme situation." Luis C. Forteza e Hijos, Inc. v. Mills, 534 F.2d 415, 419 (1st Cir. 1976). When reviewing sanctions orders, the First Circuit considers a number of substantive factors, including: "the severity of the violation, the legitimacy of the party's excuse, repetition of violations, the deliberateness vel non of the misconduct, mitigating excuses, prejudice to the other side and to the operations of the court, and the adequacy of lesser sanctions." Malot v. Dorado Beach Cottages Assocs., 478 F.3d 40, 44 (1st Cir. 2007) (quoting Benitez-Garcia v. Gonzalez-Vega, 468 F.3d 1, 5 (1st Cir. 2006)). The First Circuit also considers procedural concerns "such as notice, opportunity to be heard, and the court's explanation for its choice of sanction." Id.
Kologik has separated Defendants' alleged misconduct into three categories: (1) refusing to allow Kologik to take a supplemental 30(b)(6) deposition in 2022; (2) failure to review all documents collected (but not produced) by prior counsel; and (3) failing to recover certain third-party communications. See Kologik's Motion for Summary Judgment, Docket No. 302, at 17.
Addressing these in turn:
First, the dispute over the taking of additional depositions, as permitted by Magistrate Judge Bowler (see Docket No. 259), has been resolved by the Court. See Docket No. 299 (granting in part Kologik's motion to take a supplemental 30(b)(6) deposition of Defendant In Force Technology, LLC). The Court's original order had identified a number (three) of additional depositions to be taken, but the order did not expressly anticipate a supplemental 30(b)(6) deposition. Docket No. 259. Thus, there was some ambiguity as to whether the order encompassed a supplemental deposition of a corporation. Sanctions are wholly inappropriate when there is a colorable question as to the meaning or application of the Court's order.
Second, Kologik's contentions about the sufficiency of counsel's review of documents that had been collected by prior counsel are more quibble than substance. In May 2022, Magistrate Judge Bowler issued an order on a prior motion to compel discovery. See Docket No. 244. This order directed Defendants to affirm that they "reviewed all of the . . . [prior counsel documents] in the previously referenced. . . database." Docket No. 244, at 26. Defendants submitted an affidavit on May 25, 2022, which stated that Defendants' counsel had reviewed the documents "tagged for case-related issues for responsiveness" that had been applied by prior counsel and had produced all responsive documents to Kologik. Handy Aff., Docket No. 251-2, ¶¶ 3-4. Kologik argues that this was insufficient inasmuch as Defendants new counsel did not start a whole new document review from scratch.
Here again, the precise demands of the Court's order are subject to interpretation. In any event, the appropriate response would be motion practice aimed
at efficiently completing discovery, not a draconian sanction to hand Kologik an unearned home run. Defendants' new counsel stepped into a pitched discovery battle and relied on the prior work of predecessor counsel. This course of conduct seems reasonable — successor counsel are not generally expected to redo discovery practice. Notably absent from Kologik's demand for sanctions is any suggestion that Defendants' purported shortcomings affected the merits of the case. Kologik fails to identify any evidence, direct or inferential, to suggest there are additional responsive documents that have not been produced.
Third, Kologik's contention regarding recovery of third-party communications depends on a dubious reading of a prior Court order. In March 2020, Magistrate Judge Bowler issued an order in the wake of another of Kologik's prior motions for sanctions. See Docket No. 103. By its terms, this order directed Defendants to "take responsibility for recovering" certain third-party customer communications. Docket No. 103, at 9. The premise of Kologik's present motion is that the method employed by Defendants to retrieve those communications was deficient. Specifically, Kologik faults Defendants' decision to task Brandon Flanagan with directly emailing the third parties in question. Defendants counter that Magistrate Judge Bowler did not prescribe any particular approach, and they note that the March 2020 order does not require Defendants to subpoena their own customers. See Opp. to Kologik's Motion for Summary Judgment, Docket No. 315, at 12.
Defendants have the better of this spat. The March 2020 order did not require Defendants to issue subpoenas to the third parties and it appears that Defendants have taken reasonable steps to recover the missing communications. Kologik's request here seems to be a retread of prior arguments for contempt and sanctions. See generally Docket No. 113. Upon report and recommendation from the Magistrate Judge who issued the order in question, the prior contempt motion was denied in full. See Report and Recommendation, Docket No. 155, adopted by Order, Docket No. 205.
Kologik's present motion is not wholly adventitious in that the Court has previously issued discovery-related warnings to Defendants. See, e.g., Order, Docket No. 244 ("This court has afforded defendants several opportunities to comply with their discovery obligations. It declines to offer them yet another."). Kologik, however, has already filed four motions for sanctions, with results that can best be described as mixed. See Docket Nos. 90, 113, 160, 252. While the Court has entered discovery orders in Kologik's favor, it has not imposed the kind of draconian sanctions Kologik urges. See Docket Nos. 103 (denying request for monetary sanctions and reserving jury instruction on spoliation for trial), 205 (denying motion for contempt and sanctions), 288 (denying motion for injunctive relief and sanctions), 259 (denying request for monetary sanctions without prejudice).
As to this fifth motion for sanctions, I recommend that no sanctions be entered against Defendants.
CONCLUSION
For the reasons set forth above, I recommend GRANTING in part and DENYING in part Kologik's Motion for Summary Judgment (Docket No. 301). The Court should enter a judgment of "no invalidity" as to Defendants' challenge to the validity of the '965 Patent. The Court should deny Kologik's motion for summary judgment as to infringement of the '965 Patent. And the Court should deny Kologik's
motion for sanctions under Rule 37(b)(2)(A).
For the reasons set forth above, I recommend GRANTING Defendants' Motion for Summary Judgment of Noninfringement (Docket No. 305) and entering judgment dismissing Count 20 (direct infringement of the '965 Patent) and Count 22 (inducing infringement of the '965 Patent) of the FAC with prejudice.
The parties are hereby advised that under the provisions of Federal Rule of Civil Procedure 72(b), any party who objects to this recommendation must file specific written objections thereto with the Clerk of this Court within 14 days of the party's receipt of this Report and Recommendation. The written objections must specifically identify the portion of the proposed findings, recommendations, or report to which objection is made and the basis for such objections. The parties are further advised that the United States Court of Appeals for this Circuit has repeatedly indicated that failure to comply with Rule 72(b) will preclude further appellate review of the District Court's order based on this Report and Recommendation. See Keating v. Secretary of Health & Human Servs., 848 F.2d 271 (1st Cir. 1988); United States v. Valencia-Copete, 792 F.2d 4 (1st Cir. 1986); Scott v. Schweiker, 702 F.2d 13, 14 (1st Cir. 1983); United States v. Vega, 678 F.2d 376, 378-79 (1st Cir. 1982); Park Motor Mart, Inc. v. Ford Motor Co., 616 F.2d 603 (1st Cir. 1980); see also Thomas v. Arn, 474 U.S. 140, 106 S.Ct. 466, 88 L.Ed.2d 435 (1985).
August 22, 2023.