United States District Court, N.D. California
ORDER GRANTING IN PART AND DENYING IN PART
SPEEDTRACK'S MOTION FOR PARTIAL SUMMARY JUDGMENT Re: Dkt.
JEFFREY S. WHITE, United States District Judge
before the Court is the motion filed by plaintiff SpeedTrack,
Inc. (“SpeedTrack” or “Plaintiff”)
for partial summary judgment. SpeedTrack contends it is not
precluded by collateral estoppel or prosecution history
estoppel from asserting its infringement claims. Having
considered the parties' papers, relevant legal authority,
and the record in this case, the Court HEREBY GRANTS IN PART
and DENIES IN PART SpeedTrack's motion.
September 23, 2009, SpeedTrack brought this action for
infringement of U.S. Patent No. 5, 544, 360 (“the
'360 Patent”). SpeedTrack's Second Amended
Complaint, filed November 1, 2017, asserts claims against:
Amazon.com, Inc.; Barnes & Noble Booksellers,
Inc.; J & R Electronics, Inc.; Dell Inc.;
Best Buy Co.; BestBuy.com, LLC; Systemax, Inc.; Officemax,
Inc.; Macy's, Inc.; Macys.com, LLC; Overstock.com,
Inc.; Recreational Equipment, Inc.; EVINE Live,
Inc.; B&H Foto & Electronics Corp.;
Hewlett-Packard Co.; Retail Convergence.com, LP dba
Smartbargains.com; and Systemax, Inc. subsidiaries, NA Tech
Direct, Inc.; Pocahontas Corp.; SYX North American Tech.
Holdings LLC; and NA Tech Computer Supplies Inc.
(collectively “Defendants”). (See Dkt.
Nos. 280, 283, Stipulation and Second Amended Complaint.)
'360 Patent is directed at the problem in prior art data
storage systems in which user search terms, possibly mistyped
or misspelled, could fail to yield results. SpeedTrack has
asserted infringement of three independent claims-two method
claims (Claims 1 and 20) and one system claim (Claim
15)-arising from Defendants' Internet retail websites. In
general, the claims require three components: (1) a
“category description table, ” (2) a “file
information directory, ” and (3) a “search
filter.” (See '360 Patent, Claims 1, 20.)
The “category description table” contains
“category descriptions, ” each comprising a
“descriptive name, ” and having “no
hierarchical relationship with such list or each
other.” (See id., Claim 1.) The “file
information directory” comprises entries corresponding
to stored files, where each entry has “a unique file
identifier for the corresponding file, and a set of category
descriptions selected from the category descriptions
table.” (See id.) Finally, the “search
filter” allows the user to access the stored files with
a set category descriptions, wherein each set is guaranteed
to have at least one matching entry in the file information
directory. (See id.) In other words, the claimed
invention is a method and system for accessing stored files,
in which the user can only search for terms (i.e.,
category descriptions) that have been associated with
existing files (i.e., entries in the file
information directory). (See id.)
now moves for partial summary judgment on two affirmative
defenses: collateral estoppel and prosecution history
estoppel. The Court shall address additional facts as
necessary in the remainder of this Order.
party may move for summary judgment, identifying each claim
or defense . . . on which summary judgment is sought.”
Fed.R.Civ.P. 56(a). A principal purpose of the summary
judgment procedure is to identify and dispose of factually
unsupported claims. Celotex Corp. v. Catrett, 477
U.S. 317, 323-24 (1986). Summary judgment, or partial summary
judgment, is proper “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). “In considering a motion for summary judgment,
the court may not weigh the evidence or make credibility
determinations, and is required to draw all inferences in a
light most favorable to the non-moving party.”
Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir.
1997), abrogated on other grounds by Shakur v.
Schriro, 514 F.3d 878, 884-85 (9th Cir. 2008).
party moving for summary judgment bears the initial burden of
identifying those portions of the pleadings, discovery, and
affidavits that demonstrate the absence of a genuine issue of
material fact. Celotex, 477 U.S. at 323; see
also Fed. R. Civ. P. 56(c). An issue of fact is
“genuine” only if there is sufficient evidence
for a reasonable fact finder to find for the non-moving
party. Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248-49 (1986). A fact is “material” if it
may affect the outcome of the case. Id. at 248. If
the party moving for summary judgment does not have the
ultimate burden of persuasion at trial, that party must
produce evidence which either negates an essential element of
the non-moving party's claims or that party must show
that the non-moving party does not have enough evidence of an
essential element to carry its ultimate burden of persuasion
at trial. Nissan Fire & Marine Ins. Co. v. Fritz
Cos., 210 F.3d 1099, 1102 (9th Cir. 2000).
the moving party meets its initial burden, the non-moving
party must “identify with reasonable particularity the
evidence that precludes summary judgment.” Keenan
v. Allan, 91 F.3d 1275, 1279 (9th Cir. 1996) (quoting
Richards v. Combined Ins. Co., 55 F.3d 247, 251 (7th
Cir. 1995). It is not the Court's task “to scour
the record in search of a genuine issue of triable
fact.” Id.; see also Fed. R. Civ. P.
56(c)(3) (“The court need consider only the cited
materials, but it may consider other materials in the
record.”). If the non-moving party fails to point to
evidence precluding summary judgment, the moving party is
entitled to judgment as a matter of law. Celotex,
477 U.S. at 323.
The Court Grants in Part and Denies in Part the Motion with
Respect to Collateral Estoppel.
argues that it is not precluded by collateral estoppel from
asserting infringement, literally or under the doctrine of
equivalents. Regional circuit law governs general collateral
estoppel principles. Aspex Eyewear, Inc. v. Zenni Optical
Inc., 713 F.3d 1377, 1380 (Fed. Cir. 2013). The Ninth
Circuit's prerequisites for offensive non-mutual
collateral estoppel are whether:
(1) there was a full and fair opportunity to litigate the
identical issue in the prior action; (2) the issue was
actually litigated in the prior action; (3) the issue was
decided in a final judgment; and (4) the party against whom
collateral estoppel is asserted was a party or in privity
with a party in the prior action.
Collins v. D.R. Horton, Inc., 505 F.3d 874, 882 n.8
(9th Cir. 2007) (quoting Syverson v. IBM, 472 F.3d
1072, 1078 (9th Cir. 2007)).
The Prior Law Suits.
asserted the '360 Patent in two prior suits against
different defendants. In the first action, SpeedTrack sued
Walmart.com USA, LLC (“Walmart”) for infringement
based on Walmart's retail website. SpeedTrack, Inc.
v. Wal-Mart Stores, Inc., 2008 U.S. Dist. LEXIS 120644
(N.D. Cal. June 19, 2008). Specifically, SpeedTrack alleged
infringement of independent claims 1 and 20, and dependent
claims 2-4, 7, 11-14, and 21, all of which are method claims.
Id. at *5. Endeca Technologies, Inc.
(“Endeca”) intervened as the company that had
provided Walmart the software at issue. Id. at *3-4.
Among other terms, the court construed “category
description, ” as used in both independent claims 1 and
20, to mean “information that includes a name that is
descriptive of something about a stored file.”
Id. at *46.
parties later raised new arguments, which caused the court to
request additional briefing on a revised construction of the
term “category description.” SpeedTrack, Inc.
v. Wal-Mart Stores, Inc., 2012 WL 581338, at *7 (N.D.
Cal. Feb. 22, 2012). SpeedTrack argued that the term should
to be construed to mean “information that is
descriptive of something about a stored file, ” while
defendants advocated for the original construction.
Id. The core dispute was “whether
‘category description, ' as used in the claim
language, requires ‘information' that contains an
alphabetic descriptive name, or whether it requires
‘information' that may include an alphabetic
descriptive name or numeric identifiers.'”
Id. The court held that its earlier construction of
“category description” was correct, and within
that construction, a “name that is descriptive of
something about a stored file” required a solely
alphabetic name. Id. at *7-8. The parties did not
dispute that Endeca's “file information
directory” had only numerical identifiers, rather than
alphabetic names. Id. at *10. Accordingly, the court
granted summary judgment of non-infringement, because
Endeca's system could not meet the “category
description” limitation. Id.
Federal Circuit affirmed the district court's grant of
non-infringement, and its construction of “category
description” as “information that includes a name
that is descriptive of something about a stored file, ”
where “‘name, ' as used in the claim
language, requires ‘information' that must include,
but is not limited to, a description in alphabetic
form.” SpeedTrack, Inc. v. Endeca Techs, Inc.,
624 Fed. App'x 651, 656-57 (Fed. Cir. 2013).
second action, SpeedTrack sued a different set of defendants,
all of whom used Endeca's system. SpeedTrack, Inc. v.
Office Depot, Inc., 2014 WL 1813292, at *1-2 (N.D. Cal.
May 6, 2014). The court held that SpeedTrack's
infringement claims under the doctrine of equivalents were
not barred by collateral estoppel, because the issue was
never actually litigated in Wal-Mart. Id.
at *7. The court still granted defendants' motion for
summary judgment, however, as it found SpeedTrack's
infringement claims barred in part by res judicata, and in
whole by the Kessler doctrine. Id. at *9.
The Federal Circuit affirmed solely on the basis of the
Kessler doctrine. SpeedTrack, Inc. v. Office
Depot, Inc., 791 F.3d 1317 (Fed. Cir. 2015).
The Previously Asserted Claims (Claims 1, 2, 7, 11, 20, 21).