Orenshteyn v. Int'l Bus. Machs., Corp.

979 F.Supp.2d 448

Alexander ORENSHTEYN, Plaintiff,

v.INTERNATIONAL BUSINESS MACHINES, CORP., Defendants.

No. 02 Civ. 5074(JFK).

United States District Court, S.D. New York.

Oct. 25, 2013.

Joseph Zito, Zito TLP, for Plaintiff Alexander Orenshteyn.

Marc Pensabene, Santiago Velez, Fitzpatrick, Cella, Harper & Scinto, for Defendant International Business Machines, Corp.

OPINION & ORDER

JOHN F. KEENAN, District Judge.

Before the Court is Defendant International Business Machines Corporation's (“IBM”) motion for summary judgment. For the reasons that follow, the motion is granted.

I. Background

In a complaint dated July 1, 2002, Plaintiff Alexander Orenshteyn alleges that he is the sole owner of United States Letters Patent Nos. 5,889,942 (the “'942 Patent”) and 6,393,569 (the “'569 Patent”) for an invention entitled “Secured System for Accessing Application Services from a Remote Station.” The patents involve a system by which individual “client” computer stations interact with remote “server” computers. Computer programs run on the server, but the programs only save data to the client computers. See Pl. Opp. at 3 (“The key to Orenshteyn's alleged invention is limiting access to the program server, which only serves programs and does not allow remote control, while allowing one or more client computers, that are accessing the application programs running on the server, to maintain each client's permanent data storage on the client computer.”).

This case ¹ was stayed and later administratively closed pending the outcome of a similar case brought by Plaintiff against Citrix Systems in the Southern District of Florida. In that action, Plaintiff asserted infringement of the same patents at issue here against Citrix. Concluding that Plaintiff had failed to show that Citrix's products infringed upon his patents, the Florida court granted summary judgment in favor of Citrix. See Orenshteyn v. Citrix Sys., Inc., 265 F.Supp.2d 1323 (S.D.Fl.2003), aff'd in part, rev'd in part,341 Fed.Appx. 621 (Fed.Cir.2009). On appeal, the Federal Circuit agreed with the lower court that Plaintiff had not shown evidence of infringement of the ' 569 Patent, but remanded as to the ' 942 Patent because it concluded that the lower court had misconstrued part of that patent's Claim 1. See341 Fed.Appx. at 624–26. Although the parties resumed their litigation in the Southern District of Florida, they agreed to reopen the instant case. This Court entered an order lifting the stay on March 8, 2011.

The very next day, the Florida district court again granted summary judgment to Citrix, holding that five pieces of prior art rendered Claim 1 of the ' 942 Patent invalid. See Orenshteyn, No. 02–60478–Civ (S.D.Fl. Mar. 9, 2011) (ECF No. 371), aff'd,501 Fed.Appx. 981 (Fed.Cir.2013) (per curiam). The Federal Circuit affirmed the decision without comment. See501 Fed.Appx. 981.

In the instant motion, IBM argues that the basis for the Florida court's ruling as to Claim 1 of the '942 Patent “applies equally to all of the Orenshteyn patent claims asserted in this case.” (IBM Br. at 4.) The Florida court relied upon the report of Citrix's expert, Dr. José A.B. Fortes, who opined that Claim 1 of the '942 Patent is invalid in light of five pieces of prior art. Dr. Fortes is now retained as IBM's expert in the instant case. IBM relies on the five pieces of prior art put forth by Dr. Fortes in Florida, and sets forth three additional pieces of prior art that purportedly also provide a basis to invalidate the claims in Plaintiff's patents.

Although Plaintiff has made allegations regarding different claims over the long life of this litigation, at present he only asserts infringement of Claims 14 and 56 of the '942 Patent, and Claim 1 of the '569 Patent (together, the “Remaining Claims”). (Pl. Opp. at 1–2.) IBM dismisses Claims 14 and 56 of the '942 Patent as containing “only minor variations” of invalid Claim 1 of the '942 patent. (IBM Br. at 22–23.). Plaintiff responds that Claims 14 and 56 have an additional limitation that makes them patentably distinct from invalid Claim 1.

With respect to Claim 1 of the '569 Patent, IBM argues that all of its limitations are identical to those found in Claim 1 of the '942 Patent, which was held invalid by the Florida court. Plaintiff concedes that Claim 1 of the '569 Patent “claims similar subject matter to Claim 1 of the '942 Patent.” But Plaintiff contends that the decision of the Florida court, which was affirmed by the Federal Circuit, should not be applied “reflexively” because Plaintiff argues that the prior ruling was a “default decision.” (Pl. Opp. at 19.)

II. Discussion

A. Legal Standards

1. Summary Judgment

A movant is entitled to summary judgment where the evidence, viewed in the light most favorable to the non-movant, shows that “there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(a); Vacold LLC v. Cerami, 545 F.3d 114, 121 (2d Cir.2008) (citing Allianz Ins. Co. v. Lerner, 416 F.3d 109, 113 (2d Cir.2005)). The movant bears the initial burden of demonstrating “the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Where the moving party meets that burden, the opposing party must then come forward with specific evidence demonstrating the existence of a genuine dispute of material fact. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). “The mere existence of a scintilla of evidence in support of the non-movant's position will be insufficient; there must be evidence on which the jury could reasonably find for the nonmovant.” Hayut v. State Univ. of N.Y., 352 F.3d 733, 743 (2d Cir.2003) (alterations omitted). “Only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505.

Generally, a court should not make credibility determinations about competing experts when deciding a summary judgment motion, because “credibility issues are normally resolved by a jury based on the in-court testimony.” City of New York v. Golden Feather Smoke Shop, Inc., No. 08 Civ. 3966, 2013 WL 1334220, at *18 (E.D.N.Y. Mar. 29, 2013) (citing Jeffreys v. City of New York, 426 F.3d 549, 551 (2d Cir.2005)); see also Scanner Techs. Corp. v. Icos Vision Sys. Corp., 253 F.Supp.2d 624, 634 (S.D.N.Y.2003). Nevertheless, the mere existence of conflicting experts in a case is not a per se bar on the entry of summary judgment. In re Omnicom Grp., Inc. Secs. Litig., 597 F.3d 501, 512 (2d Cir.2010) (citing Raskin v. Wyatt Co., 125 F.3d 55, 65 (2d Cir.1997)). If, after construing the expert reports in the non-movant plaintiff's favor, the court concludes that a report is “insufficient to permit a rational juror to find in favor of the plaintiff, the court remains free to ... grant summary judgment for defendant.” Amorgianos v. Nat'l R.R. Passenger Corp., 303 F.3d 256, 267 (2d Cir.2002).

2. Collateral Estoppel

Collateral estoppel “prevents relitigation in a subsequent action of ‘an issue of law or fact actually litigated and decided by a court of competent jurisdiction in a prior action.’ ” Olin Corp. v. Am. Home Assurance Co., 704 F.3d 89, 98 (2d Cir.2012) (quoting Ali v. Mukasey, 529 F.3d 478, 489 (2d Cir.2008)). A party may not relitigate an issue where “(1) the identical issue was raised in a previous proceeding; (2) the issue was actually litigated and decided in the previous proceeding; (3) the party had a full and fair opportunity to litigate the issue; and (4) the resolution of the issue was necessary to support a valid and final judgment on the merits.” E.g., Proctor v. LeClaire, 715 F.3d 402, 414 (2d Cir.2013). See generally Aspex Eyewear, Inc. v. Zenni Optical Inc., 713 F.3d 1377, 1380 (Fed.Cir.2013) (noting that regional circuit precedent guides collateral estoppel analysis).

“In the field of patent law, the Federal Circuit has counseled that collateral estoppel may apply to patent claims that were not previously adjudicated, because the ‘issues litigated, not the specific claims around which the issues were framed’ are determinative.” Medinol Ltd. v. Guidant Corp., 341 F.Supp.2d 301, 314 (S.D.N.Y.2004) (quoting Westwood Chem., Inc. v. United States, 207 Ct.Cl. 791, 525 F.2d 1367, 1372 (1975)). Courts in this district have further noted that collateral estoppel “forecloses patent claims that are ‘patentably distinct’ from rejected claims.” Purdue Pharma L.P. v. Ranbaxy Inc., No. 10 Civ. 3734, 2012 WL 3854640, at *3 (S.D.N.Y. Sept. 5, 2012); see In re Deckler, 977 F.2d 1449, 1452 (Fed.Cir.1992).

3. Substantive Patent Law

Patents are presumed valid, and a defendant must demonstrate invalidity by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, –––U.S. ––––, 131 S.Ct. 2238, 2243, 180 L.Ed.2d 131 (2011). Patents may contain both independent claims and dependent claims. Independent claims do not rely on any other claims. Dependent claims refer to another claim, and not only include all of the limitations of the referenced claim but also add at least one more limitation. See35 U.S.C. § 121(c, d). The presumption of validity applies to dependent claims even if the independent claim upon which they rely is invalid. See35 U.S.C. § 282(a).

“It is elementary in patent law that, in determining whether a patent is valid and, if valid, infringed, the first step is to determine the meaning and scope of each claim in suit.” Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed.Cir.1992). However, because IBM accepts Plaintiff's proposed claim constructions for the purposes of its summary judgment motion, this Court need not construe the disputed claims. See F & G Research, Inc. v. Google Inc., No. 06–60905–Civ, 2007 WL 2774031, at *9 (S.D.Fl. Sept. 21, 2007) (“It is proper in a motion for summary judgment...