ART+COM Innovationpool GmbH v. Google Inc.

155 F.Supp.3d 489

ART+COM Innovationpool GmbH, Plaintiff;

v.Google Inc., Defendant.

Civil Action No. 14-217-RGA

United States District Court, D. Delaware.

Signed April 28, 2016

Brian E. Farnan, Esq., Michael J. Farnan, Esq., Farnan LLP, Wilmington, DE; Scott F. Partridge, Esq. (argued), C. Ryan Pinckney, Esq., Larry G. Spears, Esq. (argued), Lisa C. Kelly, Esq., Lisa M. Thomas, Esq., M. Natalie Alfaro, Esq., Michael A. Hawes, Esq. (argued), Baker Botts LLP, Houston, TX, attorneys for Plaintiff ART+COM Innovationpool GmbH.

Jack B. Blumenfeld, Esq., Paul Saindon, Esq., Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE; Darin W. Snyder, Esq. (argued), Luann L. Simmons, Esq., Mark Liang, Esq., Mishima Alam, Esq., John X. Zhu, Esq., David S. Almeling, Esq. (argued), O'Melveny & Myers LLP, San Francisco, CA, attorneys for Defendant Google Inc.

MEMORANDUM OPINION

ANDREWS, UNITED STATES DISTRICT JUDGE:

Presently before the Court are Defendant's motions for summary judgment on invalidity and non-infringement, no willful infringement, and laches; and Plaintiff's motion for summary judgment on prior art and inequitable conduct. (D.I. 227, 234, 233, 234, 246). Also before the Court are Plaintiff's motions to preclude certain testimony of Dr. Michael F. Goodchild and Brett L. Reed, and Defendant's motion to preclude testimony of James J. Nawrocki. (D.I. 237, 240, 243). The issues have been fully briefed. Oral argument was held on March 24, 2016. (D.I. 336). For the reasons set forth herein, the Defendant's motion for summary judgment of invalidity and non-infringement is DENIED; Defendant's motion for summary judgment of no willful infringement is GRANTED; Defendant's motion for partial summary judgment on laches is DENIED; Plaintiff's motion for summary judgment is GRANTED IN PART and DENIED IN PART; Defendant's motion to preclude testimony of Mr. Nawrocki is GRANTED IN PART and DENIED IN PART; Plaintiff's motion to preclude certain testimony of Dr. Goodchild is GRANTED IN PART and DENIED IN PART; and Plaintiff's motion to preclude certain testimony by Mr. Reed is GRANTED IN PART and DENIED IN PART.

I. BACKGROUND

ART+COM Innovationpool GmbH (“ACI”) filed this patent infringement lawsuit against Google Inc. on February 20, 2014. (D.I. 1). ACI alleges that Google infringes U.S. Patent No. RE44,550 (the “'550 patent”). (Id. ). The '550 patent describes a software-implemented method for providing a “pictorial representation of space-related data, particularly geographical data of flat or physical objects.” '550 patent at 1:15-17; (D.I. 336 at 19). On January 15, 2016, ACI and Google filed the motions at issue.

II. LEGAL STANDARDS

A. Summary Judgment

“The court shall grant summary judgment 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). The moving party has the initial burden of proving the absence of a genuinely disputed material fact relative to the claims in question. Celotex Corp. v. Catrett , 477 U.S. 317, 330, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Material facts are those “that could affect the outcome” of the proceeding, and “a dispute about a material fact is ‘genuine’ if the evidence is sufficient to permit a reasonable jury to return a verdict for the nonmoving party.” Lamont v. New Jersey , 637 F.3d 177, 181 (3d Cir.2011) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). The burden on the moving party may be discharged by pointing out to the district court that there is an absence of evidence supporting the non-moving party's case. Celotex , 477 U.S. at 323, 106 S.Ct. 2548.

The burden then shifts to the non-movant to demonstrate the existence of a genuine issue for trial. Matsushita Elec. Indus. v. Zenith Radio Corp. , 475 U.S. 574, 586–87, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ; Williams v. Borough of West Chester, Pa. , 891 F.2d 458, 460–61 (3d Cir.1989). A non-moving party asserting that a fact is genuinely disputed must support such an assertion by: “(A) citing to particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations ..., admissions, interrogatory answers, or other materials; or (B) showing that the materials cited [by the opposing party] do not establish the absence ... of a genuine dispute ....” Fed. R. Civ. P. 56(c)(1).

When determining whether a genuine issue of material fact exists, the court must view the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor. Scott v. Harris , 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007) ; Wishkin v. Potter , 476 F.3d 180, 184 (3d Cir.2007). A dispute is “genuine” only if the evidence is such that a reasonable jury could return a verdict for the non-moving party. Anderson , 477 U.S. at 247–49, 106 S.Ct. 2505. If the non-moving party fails to make a sufficient showing on an essential element of its case with respect to which it has the burden of proof, the moving party is entitled to judgment as a matter of law. See Celotex Corp. , 477 U.S. at 322, 106 S.Ct. 2548.

B. Daubert

Federal Rule of Evidence 702 sets out the requirements for expert witness testimony and states:

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if: (a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case.

Fed. R. Evid. 702. The Third Circuit has explained:

Rule 702 embodies a trilogy of restrictions on expert testimony: qualification, reliability and fit. Qualification refers to the requirement that the witness possess specialized expertise. We have interpreted this requirement liberally, holding that “a broad range of knowledge, skills, and training qualify an expert.” Secondly, the testimony must be reliable; it “must be based on the ‘methods and procedures of science’ rather than on ‘subjective belief or unsupported speculation’; the expert must have ‘good grounds' for his o[r] her belief. In sum, Daubert holds that an inquiry into the reliability of scientific evidence under Rule 702 requires a determination as to its scientific validity.” Finally, Rule 702 requires that the expert testimony must fit the issues in the case. In other words, the expert's testimony must be relevant for the purposes of the case and must assist the trier of fact. The Supreme Court explained in Daubert that “Rule 702's ‘helpfulness' standard requires a valid scientific connection to the pertinent inquiry as a precondition to admissibility.”

By means of a so-called “Daubert hearing,” the district court acts as a gatekeeper, preventing opinion testimony that does not meet the requirements of qualification, reliability and fit from reaching the jury. See Daubert (“Faced with a proffer of expert scientific testimony, then, the trial judge must determine at the outset, pursuant to Rule 104(a) [of the Federal Rules of Evidence] whether the expert is proposing to testify to (1) scientific knowledge that (2) will assist the trier of fact to understand or determine a fact in issue.”).

Schneider ex rel. Estate of Schneider v. Fried , 320 F.3d 396, 404–05 (3d Cir.2003) (footnote and internal citations omitted).¹

The party offering expert testimony bears the burden of proving its admissibility by a preponderance of the evidence. See Daubert v. Merrell Dow Pharms., Inc. , 509 U.S. 579, 592 n. 10, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993). In the context of calculating a reasonably royalty in a patent case under 35 U.S.C. § 284, the Federal Circuit has explained that “damages awarded for patent infringement must reflect the value attributable to the infringing features of the product, and no more.” CSIRO v. Cisco Sys., Inc. , 809 F.3d 1295, 1301 (Fed.Cir.2015) (internal quotation marks omitted). “[G]iven the great financial incentive parties have to exploit the inherent imprecision in patent valuation, courts must be proactive to ensure that the testimony presented—using whatever methodology—is sufficiently reliable to support a damages award.” Id. Further, the Federal Circuit has “consistently explained that proof of damages must be carefully tied to the claimed invention itself.” Apple Inc. v. Motorola, Inc. , 757 F.3d 1286, 1324 (Fed.Cir.2014). “While questions regarding which facts are most relevant for calculating a reasonable royalty are properly left to the jury, a critical prerequisite is that the underlying methodology be sound.” VirnetX, Inc. v. Cisco Sys., Inc. , 767 F.3d 1308, 1328 (Fed.Cir.2014). “[T]he essential requirement for reliability under Daubert is that the ultimate reasonable royalty award must be based on the incremental value that the patented invention adds to the end product.”

CSI RO , 809 F.3d at 1301 (internal quotation marks omitted).

III. DISCUSSION

A. ACI's Motion for Summary Judgment

ACI moves for summary judgment on several pieces of prior art, arguing that they do not qualify as prior art under 35 U.S.C. § 102. ACI also moves for summary judgment of no inequitable conduct, arguing that Google has failed to advance sufficient evidence of deceptive intent.

i. Google's Publication Prior Art

“Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” In re Hall , 781 F.2d 897, 898–99 (Fed.Cir.1986). To show that a reference was “publicly accessible,” a party must show “that such...