The opinion of the court was delivered by: Lucy H. Koh United States District Judge
ORDER GRANTING IN PART AND DENYING IN PART APPLE'S MOTION FOR PARTIAL SUMMARY JUDGMENT 10
Plaintiff Apple, Inc. ("Apple") filed a motion for summary judgment against Defendants 15 and Counterclaimants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and 16 Samsung filed its opposition on May 31, 2012 ("Opp'n"). Apple filed its reply on June 7, 2012 18
("Reply"). The Court held a hearing on June 21, 2012. The pretrial conference in this matter is set 19 for July 18, 2012; the trial will begin on July 30, 2012. Because the parties require a ruling on this 20 motion on an expedited basis, the Court will keep its analysis brief. 21
Samsung's cellular telephones and tablet computers. Apple alleges that Samsung's products 24 infringe on Apple's utility and design patents as well as Apple's trademark and trade dress. 25
Samsung's motion for summary judgment on Apple's affirmative claims is addressed in a separate 26 order. In response to Apple filing suit against Samsung, Samsung filed counterclaims against 27
Apple alleging that Apple's products infringe Samsung's utility patents. Additional facts are 28 discussed below, as necessary, in the Court's analysis.
Samsung Telecommunications America, LLC (collectively "Samsung") on May 17, 2012 ("MSJ"). 17
The parties are familiar with the factual and procedural background of this case, and the Court will not repeat it in detail here. In sum, at the center of the parties' dispute in this lawsuit are 23 2 of the claims originally asserted in the complaint, counterclaims, and counterclaims in reply. 3
Apple moves for summary judgment on four of Samsung's claims covering 3 patents. Apple 4 moves for summary judgment on the following claims: (1) noninfringement of claims 25 and 26 of 5 United States Patent No. 7,456,893 ("the '893 Patent"); and (3) invalidity of claim 1 of United 7
In order to prepare this case for trial on July 30, 2012, the parties stipulated to dismiss many United States Patent No. 7,362,867 ("the '867 Patent"); (2) invalidity of claims 10 and 12 of 6
States Patent No. 7,577,460 ("the '460 Patent"). After hearing oral argument on the matter, and 8 reviewing the briefing by the parties, the evidence offered in support of the briefing, and the 9 relevant case law, the Court GRANTS in part and DENIES in part Apple's motion for summary 10 judgment. Each of Apple's arguments challenging Samsung's claims is addressed in turn below.
13 the movant shows that there is no genuine dispute as to any material fact and the movant is entitled 14 to judgment as a matter of law." Material facts are those that may affect the outcome of the case. 15 "genuine" if the evidence is such that "a reasonable jury could return a verdict for the nonmoving 17 party." See id. "[I]n ruling on a motion for summary judgment, the judge must view the evidence 18 presented through the prism of the substantive evidentiary burden." Id. at 254. The question is 19 "whether a jury could reasonably find either that the [moving party] proved his case by the quality 20 and quantity of evidence required by the governing law or that he did not." Id. "[A]ll justifiable 21 inferences must be drawn in [the non-movant's] favor." See United Steelworkers of Am. v. Phelps 22 255). 24 25 for its motion and identifying those portions of the pleadings, depositions, interrogatory answers, 26 admissions and affidavits, if any, that it contends demonstrate the absence of a genuine issue of 27 material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). A party opposing a properly 28 supported motion for summary judgment "may not rest upon the mere allegations or denials of
Under Federal Rule of Civil Procedure 56(a), "the court shall grant summary judgment if See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material fact is 16 Dodge Corp., 865 F.2d 1539, 1542 (9th Cir. 1989) (en banc) (citing Liberty Lobby, 477 U.S. at 23 The moving party bears the initial responsibility for informing the district court of the basis [that] party's pleading, but . . . must set forth specific facts showing that there is a genuine issue for 2 trial." See Fed. R. Civ. P. 56(e); see also Liberty Lobby, 477 U.S. at 250. The opposing party need 3 not show the issue will be resolved conclusively in its favor. See Liberty Lobby, 477 U.S. at 248-- 4
49. All that is necessary is submission of sufficient evidence to create a material factual dispute, 5 thereby requiring a jury or judge to resolve the parties' differing versions at trial. See id. 6
A.Non-Infringement of the '867 Patent
The '867 Patent, entitled "Apparatus and Method for Generating Scrambling Code in UMTS Mobile Communications System" was filed on July 7, 2000, and issued on April 22, 2008. 10
The '867 Patent is directed to an electronic system and method for generating "primary scrambling codes" used to distinguish base stations transmitting in a mobile communication network. See '867 Patent Abstract; 1:48-52. Without such a differentiating mechanism, cellular communications 13 systems would be unable to function due to the high density of cellular base stations and mobile 14 devices transmitting and receiving data within a given area. See Expert Report of Richard Wesel 15
The '867 system relies on a particular class of mathematical sequences, known as Gold 17 sequences, to serve as the primary scrambling codes. '867 Patent 16:6-9. These Gold sequences 18 are derived from other mathematical sequences known as m-sequences. Id. In particular, a Gold 19 sequence is formed by summing a shifted version of one m-sequence with another m-sequence. Id. 20
The number of times that the first m-sequence is shifted uniquely specifies the resulting Gold 21 sequence (up to the number of elements in the sequence), allowing for generation of multiple Gold 22 sequences by varying the number of shifts applied to the first m-sequence. Id. 23
Samsung accuses Apple's iPhones and iPads that include baseband processors of infringing 24 claims 25 and 26 of the '867 Patent because these phones generate Gold codes in the manner 25 described by the asserted claims. Wesel Report ¶ 55-69. The accused devices do not, however, 26 directly apply those Gold codes to the data in the scrambling process. See Opp'n at 5. Independent 27 claim 25 of the '867 Patent recites: 28 ("Wesel Report") ¶ 29-32. 16
An apparatus for generating scrambling codes in mobile communication system having a scrambling code generator, comprising:
a first m-sequence generator to generate a first m-sequence; a second m-sequence generator to generate a second m-sequence; and at least one adder for generating a ((K-1)*M)th Gold code as a Kth primary scrambling code by adding a (((K-1)*M)-1)-times shifted
first m-sequence and the second m-sequence, wherein K is a natural number and M is a total number of secondary scrambling codes per one primary scrambling code. '867 Patent, 15:65-16:12. Dependent claim 26 (which depends from claim 25) of the '867 7 Patent recites: 8
12 judgment of non-infringement is a two-step analysis. "First, the claims of the patent must be 13 construed to determine their scope. Second, a determination must be made as to whether the 14 properly construed claims read on the accused device." Pitney Bowes, Inc. v. Hewlett-Packard 15 Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999) (internal citation omitted). "[S]ummary judgment of 16 non-infringement can only be granted if, after viewing the alleged facts in the light most favorable 17 to the non-movant, there is no genuine issue whether the accused device is encompassed by the 18 claims." Id. at 1304. 19
The apparatus of claim 25, wherein the secondary scrambling codes of the Kth primary scrambling codes are the ((K-1)*M⯭)th through (K*M)th Gold codes.
Apple moves for summary judgment of non-infringement of the '867 Patent. Summary
The center of the parties' dispute is the third limitation of claims 25 and 26. Claims 25 and 26 each require "at least one adder for generating a ((K-1)*M)th Gold code as a Kth primary 22 scrambling code by adding a (((K-1)*M1)-times shifted first m-sequence and the second m-23 sequence." '867 Patent 16:5-8. Although the parties have not asked for claim construction, it is 24 clear that they disagree as to the meaning of the phrase "a ((K-1)*M)th Gold code as a Kth 25 primary scrambling code," and in particular the meaning of the term "scrambling code." See Mot. 26 at 10-11; Opp'n at 2-3. Samsung argues that "scrambling code" should be defined as any code 27 "generated by adding a first m-sequence and a second m-sequence." Opp'n at 3. Accordingly, 28
Samsung reads the disputed claim as applying to a "Gold code generated by adding a first m-2 sequence and a second m-sequence," which includes the accused products. Apple, however, 3 argues that "scrambling code" should be defined as "a code that is actually used to scramble data." 4
See Reply at 1. Under Apple's construction, the claim term requires that the Gold code must be 5 used to scramble data. Based on Apple's proposed construction, Apple argues that the accused 6 products do not infringe because the Gold codes in the accused devices do not scramble data. In 7 light of this dispute, this Court will now construe the disputed term. See Network Commerce, Inc. 8 v. Microsoft, 422 F.3d 1353, 1363-64 (Fed. Cir. 2005) ("There is no requirement that the district 9 court construe the claims at any particular time."). 10
Samsung's construction. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en 14 banc) ("It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to 15 which the patentee is entitled the right to exclude.'") (internal quotations and citations omitted). 16
"a . . . Gold code as a . . . primary scrambling code," the plain language suggests the gold code that 18 is generated must actually be a primary scrambling code. The plain language also suggests that a 19 gold code is a different concept from a primary scrambling code. 20
In contrast, applying Samsung's proposed definition creates an awkward and circular 21 construction. Inserting Samsung's construction into the disputed language, the term reads "at least 22 one adder for generating a . . . Gold code as a . . . primary code generated by adding a first m-23 sequence and a second m-sequence by adding a . . . shifted first m-sequence and the second m-24 sequence." Not only would such a construction render the latter part of the claim redundant, but it 25 would also give no effect to the word "primary." Similarly, under Samsung's construction, claim 26 26 would read: "The apparatus of claim 25, wherein the secondary codes generated by adding a 27 first m-sequence and a second m-sequence of the Kth primary codes generated by adding a first m-28 sequence and a second m-sequence are the ((K)*M⯭)th through (K*M)th Gold codes."
In this case, the plain meaning of the claim language, as well as the supporting intrinsic and extrinsic evidence, support Apple's construction. First, ...