The opinion of the court was delivered by: Hon. Rudi M. Brewster United States Senior District Judge
ORDER DENYING DEFENDANT MOTION FOR SUMMARY JUDGMENT OF NON-INFRINGEMENT OF U.S. PATENT NO. 5,649,131 [Group II] [Docket Nos. 2248 & 2249]
The Federal Circuit Court of Appeals vacated the Court's order granting summary judgment adverse to Plaintiff Lucent Technologies, Inc., and remanded this patent case for further proceedings. Lucent Tech., Inc. v. Gateway, Inc., 525 F.3d 1200 (Fed. Cir. 2008). The Court issued a Second Amended Claim Construction Order on U.S. Patent No. 5,649,131 ("the '131 patent") as instructed to modify the definition of the claim term "terminal device." Now Defendant Dell, Inc., joined by Intervening Defendant Microsoft Corporation, (hereinafter, collectively "Defendants") move for summary judgment of non-infringement of all of the asserted claims. Defendants rely on the Federal Circuit's construction of "terminal device" to argue that their web servers do not, as a matter of law, satisfy the new definition of "terminal device." Fed. R. Civ. P. 56. The motion was fully briefed and the Court heard oral arguments on October 14, 2008. The Court announced its tentative decision to deny the motion at the hearing, and now issues this written decision to explain its reasoning.
The '131 patent is "a communications protocol that facilitates the exchange of information between a host processor and a terminal device." Lucent, 525 F.3d at 1203 (citing '131 patent, col. 1, ll. 4-13). "A host processor is a computer that communicates with multiple users to provide services" such as database access. Id. "A user accessing the services provided by the host processor communicates with that host processor through a terminal device such as a portable computer, workstation, or smart phone." Id.
"The claims of the '131 patent are directed to methods for exchanging messages between a host processor and a terminal device." Id. For purposes of this motion, Claim 1 is exemplary:
1. A method of operating a host processor communicating with a terminal device, said method comprising the steps of assigning an identifier to a respective one of a plurality of input object types, and transmitting said identifier and its respective input object type to said device, wherein said plurality of object types includes at least two of the object types choice, entry, text, and image.
Pl.'s Ex. A at 23 ('131 patent, col. 17, ll 46-53).
The Federal Circuit defined "terminal device" as follows:
A computing device such as a data terminal, workstation, portable computer, or smart phone that enables a user to communicate with a host processor. It manages the actual positioning of objects on its associated display itself and manages its internal memory with the assistance of the host processor."
In this motion, Defendants contend that because their "web servers" (host processors) exercise "substantial, even primary, control" over the location of objects on the client's display, "it can not be said that the client computer manages the actual positioning of objects on the associated display itself." Dell's Br. at 10-11.
Discussion "Whether the accused device contains each claim limitation, as properly construed, or its equivalent, is a question of fact." Middleton, Inc. v. Minnesota Mining & Mfg. Co., 311 F.3d 1384, 1386 (Fed. Cir. 2002). As the parties moving for summary judgment, Defendants bear the burden of demonstrating the absence of any genuine issue of material fact. Conroy v. Reebok Int'l, 14 F.3d 1570, 1575 (Fed. Cir. 1994). Lucent can defeat the summary judgment motion by presenting evidence from which a reasonable jury could resolve the issue in its favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Armco, Inc. v. Cyclops Corp., 791 F.2d 147, 149 (Fed. Cir. 1986) ("[t]he party opposing the motion is required merely to point to an evidentiary conflict created on the record").
Defendants' motion is premised upon an assertion that the Court in its March 8, 2007 Order (which granted Defendants' motion for summary judgment of non-infringement) made a binding fact finding that the accused devices -- i.e., web servers -- use a position attribute to display objects at certain coordinates relative to the upper left hand corner of the display, therefore, they participate in determining the actual location of items displayed on the client's computers. Defendants contend therefore that the accused client computers do not manage the actual positioning on their associated displays "themselves" -- as required by the claim. This is an incorrect interpretation of the record. The Federal Circuit vacated the March 2007 summary judgment Order and the law of the case doctrine does not apply. The Court agrees completely with Lucent's observation that "Dell seeks to elevate a single sentence extracted from this Court's opinion explaining its reason for granting summary judgment to the status of an independent factual determination." Lucent's Opp. Br. at 13; cf. State Indus., Inc. v. Mor-Flo Indus., Inc., 948 F.2d 1573, 1576-77 (Fed. Cir. 1991) (remand after bench trial); Exxon Corp. v. United States, 931 F.2d 874, 877 (Fed. Cir. 1985) (same).
Turning to the substance of Defendants' motion, the Court finds that Lucent has identified a fact dispute as to whether the accused devices -- web servers -- infringe the '131 patent. The Federal Circuit held that the term "terminal device" does not exclude a role for or foreclose control by the host processor of the positioning of objects on the terminal display. Lucent, 525 F.3d at 1206-12.*fn1 The Federal Circuit accepted Lucent's explanation that "the host processor controls ...