United States District Court, N.D. California, San Jose Division
ORDER GRANTING-IN-PART APPLE'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF NON-INFRINGEMENT OF EMBLAZE'S ACCUSED METHOD CLAIMS
Re: Docket No. 469
PAUL S. GREWAL, Magistrate Judge.
Before the court is Defendant Apple Inc.'s motion for partial summary judgment of non-infringement of Plaintiff Emblaze Ltd.'s asserted method claims in this patent case. Emblaze opposes Apple's motion, but only in-part. Emblaze now concedes it may not pursue certain method claims in light of the Supreme Court's recent opinion in Limelight Networks, Inc. v. Akamai Technologies, Inc.  After considering the arguments, both in the papers and at the pre-trial conference, the court GRANTS Apple's motion, but only IN-PART.
I. LEGAL STANDARDS
The Patent Act provides four categories of statutory subject matter eligible for patent protection: process, machine, manufacture, and composition of matter. If a claim is not directed to one of the four subject matter categories, it is invalid. At issue here are process or "method" patent claims. The Patent Act also provides for both direct and indirect infringement.
Direct infringement, codified in Section 271(a), provides: "Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent."
Induced infringement, found in Section 271(b), continues: "Whoever actively induces infringement of a patent shall be liable as an infringer."
The interplay of those two sections is at issue in Apple's motion. Liability "for inducement must be predicated on direct infringement." "A method patent claims a number of steps; under [the Supreme Court's] case law, the patent is not infringed unless all the steps are carried out." A "method's steps have not all been performed as claimed by the patent unless they are all attributable to the same defendant, either because the defendant actually performed those steps or because he directed or controlled others who performed them." Apple thus cannot be liable for inducement if "performance of all the claimed steps cannot be attributed to a single" actor.
Apple urges summary judgment of non-infringement of the '473 patent as to method claims 1-2, 8-14, 21 and 23-24 is warranted because Emblaze's induced infringement theory attributes performance of the various steps of the method claims to multiple entities. Emblaze concedes that dependent "claims 2 and 8-14, require multiple parties, e.g., a content provider and someone operating a client computer (i.e., an iPhone, iPads etc.), and therefore Emblaze agrees to withdraw those claims form this case in view of Akamai. " While Emblaze's offer is appreciated, in light of its concession that it has insufficient proof, the appropriate outcome regarding those claims is not withdrawal, but summary judgment in favor of Apple.
What Emblaze does dispute is Apple's suggestion that performance of the steps of method claims 1, 21, 23 and 24 has only been attributed to more than a single actor. According to Emblaze, its expert Vijay Madisetti tendered an analysis supporting infringement by the content providers acting alone. Because Madisetti's solo theory survives Akamai, Emblaze says, summary judgment as to claims 1, 21, 23 and 24 is not warranted.
While the bulk of Madisetti's analysis focuses on a multiple actor theory now discredited by Akamai, there is language in Madisetti's report that MLB Advanced Media, on its own, practices all of the limitations at issue in claim 1 - and unchallenged dependent claims 21, 23 and 24. The key language from the report, paragraph 97, reads:
97. In my opinion and for the reasons discussed below, Apple has infringed Claim 1 of the 473 Patent by inducing MLB Advanced Media LP ("MLB Advanced Media") to carry out the steps in claim 1. More particularly, Apple induced third parties such as MLB Advanced Media to practice Apple's HLS protocol in an app entitled "MLB.com AT BAT" (hereinafter "MLB AT BAT") that utilizes HLS. Apple encourages third parties (such as MLB Advanced Media) to practice all of the limitations of this and each of the Asserted Claims by distributing literature, such as the Apple Overview and the IETF Specification, which explains how to implement Apple's HLS, by selling Apple client devices that can play multimedia live streamed using Apple's HLS protocol, and by encouraging app developers to develop apps for Apple client devices that facilitate the live streaming of multimedia to Apple client devices.
This language, while hardly a model of conviction or clarity, is enough to avoid summary judgment. Madisetti's approach is bolstered by his deposition testimony in which he offered "two parallel analyses of the claim." The reason is this: the court cannot say that no reasonable jury would credit Madisetti's pleading in the alternative analysis. Perhaps this hedging will expose Madisetti in cross examination. But that is Emblaze's problem, not Apple's. In any event, Apple can examine his theories and the jury can assess whether they credit his opinion.
Because Madisefti's analysis of other streams relies on his analysis of the MLB At Bat stream they, too, remain plausible even in light of Akamai. Madisetti's seemingly inconsistent deposition testimony with regard to these other accused live streams - that the combined actions of multiple parties, rather than any one party acting alone, practice the asserted method claims - also might make for an uncomfortable Cross. But in light of the report ...