Comcast Cable Commc'ns, LLC v. Sprint Commc'ns Co., LP

203 F.Supp.3d 499

COMCAST CABLE COMMUNICATIONS, LLC, TV Works, LLC, and Comcast Mo Group, Inc., Plaintiffs,

v.SPRINT COMMUNICATIONS COMPANY, LP, Sprint Spectrum, LP, and Nextel Operations, Inc., Defendants.

Sprint Communications Company, LP, and Sprint Spectrum, LP, Counterclaim-Plaintiffs,

v.Comcast Cable Communications, LLC, Comcast IP Phone, LLC, Comcast Business Communications, LLC, and Comcast Cable Communications Management, LLC, Counterclaim-Defendants.

CIVIL ACTION NO. 12-859

United States District Court, E.D. Pennsylvania.

Signed August 24, 2016

Filed August 25, 2016

Alex H. Hu, Anna M. Ison, Anthony I. Fenwick, David J. Lisson, Gareth E. Dewalt, Matthew B. Lehr, Shiwoong Kim, Davis Polk & Wardwell LLP, Menlo Park, CA, Charles C. Carson, Jason F. Hoffman, Michael E. Anderson, Baker & Hostetler LLP, Washington, DC, Edward Fu, Davis Polk & Wardwell LLP, Long Island City, NY, Rebecca Santoro Melley, William T. Hangley, Andrew M. Erdlen, Michele D. Hangley, Hangley Aronchick Segal Pudlin & Schiller, Dale M. Heist, Jeffrey W. Lesovitz, Stephanie Papastephanou, Baker & Hostetler LLP, John Frank Murphy, Woodcock Washburn LLP, Philadelphia, PA, Willy Chang, Daniel J. Goettle, Baker & Hostetler LLP, New York, NY, David Spencer Bloch, Winston & Strawn LLP, San Francisco, CA, for Plaintiffs/Counterclaim-Defendants.

Brian C. Riopelle, David E. Finkelson, Justin R. Lowery, Kristen M. Calleja, McGuire Woods LLP, Richmond, VA, George J. Barry, III, Meghan M. Rachford, McGuire Woods LLP, Atlanta, GA, Patrick A. Darno, McGuire Woods LLP, Tysons Corner, VA, Peter E. Strand, Ryan D. Dykal, Aaron E. Hankel, B. Trent Webb, Bart A. Starr, Jesse J. Camacho, Mary Jane Peal, Ryan J. Schletzbaum, Shook Hardy & Bacon LLP, Kansas City, MO, Andrew S. Gallinaro, Conrad O'Brien, Colleen Healy Simpson, John G. Harkins, Jr., Harkins Cunningham LLP, Erin P. Loucks, Shook Hardy & Bacon LLP, Philadelphia, PA, Jared M. Tong, Matthew C. Broaddus, Robert H. Reckers, Shook Hardy & Bacon LLP, Houston, TX, for Defendants/Counterclaim-Plaintiffs.

MEMORANDUM

DuBois, District Judge

TABLE OF CONTENTS

I. INTRODUCTION ...507

II. PROCEDURAL BACKGROUND ...507

III. COMCAST'S '870 PATENT...508

A. Background ...509

B. Asserted Claims ...511

C. Prior Claim Construction ...511

D. Construction of Additional Disputed Terms ...512

1. Applicable Law ...512

2. "Cellular Network" ...513

3. "Messaging Server" ...522

E. Motions for Summary Judgment Related to Eligibility and Validity ...523

1. Sprint's Motion for Summary Judgment of Ineligibility under 35 U.S.C. § 101...523

2. Sprint's Motion for Summary Judgment of Invalidity under 35 U.S.C. § 112...530

3. Comcast's Motion for Summary Judgment of No Anticipation under 35 U.S.C. § 102...533

F. Motions for Summary Judgment Related to License ...539

1. Factual Background ...539

2. Applicable Law ...539

3. Discussion ...540

G. Motions to Exclude Expert Opinions Related to the '870 Patent...542

1. Applicable Law ...542

2. Comcast's Motion to Exclude Opinions of Mark R. Lanning ...543

3. Sprint's Motion to Exclude Opinions of Bruce H. Stoner Jr. ...546

4. Motions to Exclude Expert Opinions on Damages ...548

IV. SPRINT'S '907 PATENTS...548

A. Background ...548

B. Asserted Claims ...549

C. Prior Claim Construction ...550

D. Comcast's Motion for Summary Judgment of No Infringement ...552

1. Applicable Law ...552

2. Comcast's VOD System ...553

3. Discussion ...554

E. Motions to Exclude Expert Opinions Related to the '907 Patents...557

V. CONCLUSION ...557

I. INTRODUCTION

This case involves claims of patent infringement between Comcast Cable Communications, LLC, and related entities (collectively "Comcast"), and Sprint Communications Company, L.P., and related entities (collectively "Sprint"). Comcast asserts claims for infringement of its U.S. Patent Number 6,885,870 against Sprint. Sprint asserts counterclaims for infringement of its U.S. Patents Numbers 6,754,907 and 6,757,907 against Comcast.

Presently before the Court are the parties' respective Supplemental Claim Construction Briefs, Motions for Summary Judgment, and Daubert Motions. Following a Markman hearing on supplemental claim construction and oral argument on the Motions, the Court construes the disputed claim terms and disposes of the Motions as set forth below.

II. PROCEDURAL BACKGROUND

Comcast initiated this action on February 17, 2012, by filing a Complaint against Sprint alleging infringement of four of its patents, including U.S. Patent Number 6,885,870 ("the '870 patent").¹ On May 14, 2012, Sprint filed an Answer and Counterclaim,² alleging infringement of seven of its own patents, including U.S. Patents Numbers 6,754,907 ("the '4,907 patent") and 6,757,907 ("the '7,907 patent") (collectively "the '907 patents").³ The Court has jurisdiction over this case under 28 U.S.C. § 1331 and 28 U.S.C. § 1338.

On June 6, 2012, Comcast filed a First Amended Complaint asserting claims for infringement of the '870 patent and three other patents.⁴ Sprint filed an Amended Answer and Counterclaim on June 25, 2012, asserting infringement of the same seven patents. Both parties withdrew their claims with respect to some patents prior to claim construction.⁵

In January and February 2014, the Court conducted five days of Markman hearings, which included technology tutorials and oral argument on the five patents then in the case. On August 15, 2014, the Court issued a Memorandum and Order construing the claim terms in dispute. See Comcast Cable Commc'ns, LLC, et al. v. Sprint Commc'ns Co., LP, et al. (Comcast v. Sprint I ), 38 F.Supp.3d 589 (E.D.Pa.2014). Subsequently, Comcast withdrew all claims except for those alleging infringement of the '870 patent and Sprint withdrew all claims except for those alleging infringement of the '907 patents.

The parties then proceeded with fact and expert discovery. During the course of discovery, the parties informed the Court that they believed claim construction of two additional terms in the '870 patent, "cellular network" and "messaging server," was necessary.

On August 5, 2015, following the completion of almost all discovery, the parties filed a Joint Motion to Stay in light of ongoing global settlement negotiations between Comcast and Sprint, involving this case and litigation in other courts over claims for infringement of unrelated patents. The Court granted the Motion by Order dated August 13, 2015, and stayed the case for six months. Following the parties' report of the failure of the global settlement negotiations, the Court, by Order dated February 12, 2016, returned the case to the active docket and set a briefing schedule for motions for summary judgment, Daubert motions, and supplemental claim construction on the additional disputed terms in the '870 patent.

Given the complexity of the technology related to the patents in suit and by agreement of the parties, the Court again, as it did in connection with the first Markman hearings, appointed Dr. A. J. Nichols as technical advisor. Dr. Nichols has assisted the Court by explaining, when requested, the relevant technology required for claim construction and resolution of the summary judgment and Daubert issues. His role has been limited to that contemplated by the Order dated April 27, 2016, setting forth the authority for, and terms and conditions of, his appointment.

Pursuant to the Order dated February 12, 2016, the parties filed Motions for Summary Judgment, Daubert Motions, and Supplemental Briefs on Claim Construction of the disputed terms of the '870 patent. The Court conducted supplemental Markman hearings and oral argument on the pending Motions for Summary Judgment and Daubert Motions on June 22, 23, 24, and 29, 2016. The Court addresses in turn the issues presented by the motions with respect to the '870 patent and the '907 patents as set forth below.

III. COMCAST'S '870 PATENT

The parties have identified two additional disputed terms to be construed in the '870 patent, "cellular network" and "messaging server." The Court first construes these terms as set forth below.

The Court next addresses issues raised by the parties in their respective Motions for Summary Judgment relating to the eligibility for patenting of the '870 patent under 35 U.S.C. § 101 and the validity of the '870 patent under 35 U.S.C. § 102 and 35 U.S.C. § 112, paragraph 2. In summary, the Court denies Sprint's Motion for Summary Judgment with respect to the '870 patent, in which Sprint argued that the '870 patent is ineligible under § 101 and invalid as indefinite under § 112, ¶ 2. The Court grants Comcast's Motion for Summary Judgment on the ground of no anticipation under § 102 with respect to the Vuoristo reference, but denies Comcast's Motion for Summary Judgment on the ground of no anticipation under § 102 with respect to the GSM 3.60 and Huopaniemi references.

Next, the Court addresses the parties' cross-Motions for Summary Judgment as to Sprint's license to practice the '870 patent in some of its accused systems. The Court concludes as a matter of law that Sprint did not obtain a license, and grants that part of Comcast's Motion for Summary Judgment and denies that part of Sprint's Motion for Summary Judgment.

The parties also seek to exclude a number of experts in their respective Daubert Motions. The Court denies Comcast's Motion to Exclude Sprint's expert on infringement, Mark R. Lanning, and grants in part and denies in part Sprint's Motion to Exclude Comcast's expert on validity, Bruce H. Stoner Jr. The Court does not reach the issues presented by the parties' respective Motions to Exclude various damages experts, and defers them to a later date prior to trial, if necessary.

A. Background

The '870 patent, titled "Transferring of a Message," claims a method "for inquiring about information relating to a [wireless] terminal of a cellular network from the cellular network, from a messaging server external to the cellular network." '870 patent, at 2:45–48. The patent application was filed on February 22, 2001, but asserts priority to a Finnish...