The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court
ORDER ON MOTIONS FOR JUDGMENT AS A MATTER OF LAW OR NEW TRIAL, REGARDING UNITED STATES PATENT NUMBERS 5,227,878; 5,438,433; 6,339,794; 5,917,499; 5,977,971; AND 6,565,608; [Doc. Nos. 861-64, 866-67, 870.] AND RELATED CLAIMS
This order addresses post-trial motions following a jury trial involving six United States patents: 5,227,878 ("Puri '878"); 5,438,433 ("Reifman '433"); 6,339,794 ("Bolosky '794"); 5,917,499 ("Jancke '499"); 5,977,971 ("Guzak '971"); 6,565,608 ("Fein '608"). Multimedia Patent Trust ("MPT"), a Delaware trust with Lucent Technologies Inc. ("Lucent") as the primary beneficiary, asserted the Puri '878 patent against Microsoft Corporation ("Microsoft"). Microsoft brought counterclaims against Lucent and its parent company, Alcatel Lucent. At trial, Microsoft asserted the Reifman '433, Bolosky '794, and Jancke '499 patents against Lucent only. Microsoft asserted the Guzak '971 and Fein '608 patents against both Lucent and Alcatel Lucent.
The parties filed their initial briefs on these matters on June 27, 2008. MPT filed a motion for judgment as a matter of law ("JMOL") or new trial regarding the Puri '878 patent. (Doc. No. 867.) Regarding the Puri '878 patent, Microsoft filed a conditional motion for JMOL of invalidity in the event that the Court disturbs the jury's finding of no infringement. (Doc. No. 862.) Microsoft also filed motions for JMOL or new trial regarding the Reifman '433, Bolosky '794, and Guzak '971 patents. (Doc. Nos. 863-64, 870). Lucent and Alcatel Lucent each filed motions for JMOL or new trial regarding the Guzak '971 and Fein '608 patents, including conditional motions regarding infringement of the Guzak '971 patent should the Court disturb the jury's finding on validity. (Doc. Nos. 861, 866.)*fn1
The parties filed their responsive briefing on July 11, 2008 and their reply briefs on July 18, 2008. (See Doc. Nos. 882-86, 893-94, 898, 900-03, 906-08.) The Court held a hearing on these motions on July 25, 2008. The Court concludes that these motions are suitable for decision without oral argument and submits them on the papers pursuant to its discretion under Local Civil Rule 7.1(d)(1).
I. Overview of the Verdict
The jury returned a special verdict on June 4, 2008, that did not award any infringement damages to either side. (Doc. No. 851.) With the exception of the Guzak '971 patent, the jury found no infringement. With the Guzak '971 patent, the jury found infringement by both Lucent and Alcatel Lucent, but it also found the asserted claims invalid due to anticipation and obviousness. The jury did not find any of the other patents invalid.
The Patent and Trademark Office ("PTO") issued the Puri '878 patent, entitled "Adaptive Coding and Decoding of Frames and Fields of Video," on July 13, 1993, based on an application filed November 15, 1991. Puri '878 relates generally to the compression and decompression of video signals, which reduce the amount of transmission bandwidth and storage space needed.
Two apparatus claims are at issue here: claim 13 and related dependent claim 15. The PTO issued a certificate of correction regarding claim 13 on October 25, 2005.*fn2 Claim 13 states, in its corrected form:
An apparatus for decoding a compressed digital video signal, comprising: a means for receiving a compressed digital video bit stream; and a means responsive to a motion compensation type signal for selectively and adaptively performing motion compensated decoding of frames of the compressed digital video bit stream and fields of the compressed video bit stream.
The apparatus of claim 13, in which the decoding means comprises: a means responsive to a motion compensation type signal and selectively responsive to frame motion vectors and field motion vectors for producing an adaptive motion compensated estimate of a decoded video signal; and a means responsive to the compressed digital video bit stream for producing a decoded estimate error signal; and a means responsive to the adaptive motion compensated estimate and the estimate error signal for producing a decoded video signal.
MPT accused Microsoft of infringement based on various products containing MPEG-2 or VC-1 video decoders.*fn3 MPEG-2 and VC-1 are standards for video compression used in a variety of contexts, including DVDs and HD DVDs. The accused MPEG-2 products include the Windows Vista operating system and the Xbox 360 video game console. The accused VC-1 products include the Windows Vista operating system, the Xbox 360 video game console, Windows Media Player versions 10 and 11, Windows Server 2003, Office Communicator, Windows Mobile, and Windows CE.
The jury did not find infringement by any of the accused products. Microsoft raised an obviousness defense for both claims, and the jury did not find either claim invalid for obviousness.
The PTO issued the Reifman '433 patent, entitled "System and Method for Facsimile Cover Page Storage and Use," on August 1, 1995, based on an application filed March 31, 1994. Only method claim 1 is at issue here. It states:
A method in a facsimile machine having a display and a user input device, for storage and use of a facsimile cover page, the method comprising the steps of: maintaining at least one facsimile cover page in a first storage location continuously accessible by any of a plurality of users of the facsimile machine; maintaining at least another facsimile cover page in a second storage location accessible by a selected on of said plurality of users, said selected user having a corresponding user identification; sensing if a user inputs a user identification; and enabling access to said, second storage location only if said sensed user identification corresponds to said user identification of said selected user, said first storage area being continuously enabled for any of said plurality of users and said second storage area being enabled only when said sensed user identification corresponds to said user identification of said selected user.
Microsoft claimed that Lucent infringed claim 1 through use of its AnyPath Messaging System ("APMS"). The jury held that Lucent had not infringed claim 1 of the Reifman '433 patent.No affirmative defenses regarding the Reifman '433 patent went before the jury.
The PTO issued the Bolosky '794 patent, entitled "Wire Protocol for a Media Server System," to inventors William J. Bolosky et al. based on an application filed December 8, 1995. The patent describes a protocol for establishing connections between a media server and a client. Microsoft claimed that Lucent's APMS infringes claim 33, which states:
In a distributed system having a media server storing files holding data of multiple media, a computer system comprising: a control connection generator for creating a bidirectional control connection between the media server and the computer system to enable control information to be passed between the media server and the computer system, the control connection utilizing a first transport protocol; and a data connection generator for creating a bidirectional data connection between the media server and the computer system to enable data to be passed between the media server and the computer system, the data connection using a second transport protocol distinct from the first transport protocol.
The jury held that Lucent had not infringed claim 33 of the Bolosky '794 patent. No affirmative defenses regarding the Bolosky '794 patent went before the jury.
The PTO issued the Guzak '971 patent, entitled "Tree View Control," to inventors Christopher J. Guzak, et al., on Nov. 2, 1999. The patent describes a computer user interface element, called a tree view control, that enables application programs to display hierarchical lists of items. Microsoft claimed that three products infringed claims 2 and 3 of the Guzak '971 patent: Lucent's Vital Suite product, Alcatel Lucent's ...