Superspeed, L. L.C. v. Google, Inc.

64 F.Supp.3d 987

SUPERSPEED, L.L.C., Plaintiff

v.GOOGLE, INC., Defendant.

Civil Action No. H–12–1688.

United States District Court, S.D. Texas, Houston Division.

Signed Dec. 5, 2014.

Adam Seth Rostov Carlis, Max Lalon Tribble, Jr., Neal S. Manne, Susman Godfrey LLP, Houston, TX, Daniel J. Krueger, Krueger Iselin LLP, Cypress, TX, Edgar G. Sargent, Susman Godfrey LLP, Seattle, WA, Kathryn P. Hoek, Susman Godfrey LLP, Los Angeles, CA, for Plaintiff.

Marcus A. Barber, Darcy L. Jones, Jeffrey James Toney, Jonathan K. Waldrop, Kasowitz, Benson, Torres & Friedman LLP, Atlanta, GA, David J. Beck, Michael E. Richardson, II, Robert Henry Ford, Beck Redden LLP, Houston, TX, for Defendant.

MEMORANDUM OPINION AND ORDER

SIM LAKE, District Judge.

This is a patent infringement suit filed by SuperSpeed, L.L.C. (“SuperSpeed”) against Google, Inc. (“Google”), involving United States Patent Nos. 5,577,226 (“'226 Patent”) and 5,918,244 (“'244 Patent”). The ' 226 Patent is the parent application to the '244 Patent, and both patents claim priority to U.S. Application No. 08/238,815, filed on May 6, 1994. Pending before the court are SuperSpeed's Motion to Strike Portions of Kubiatowicz Expert Report Referring to Undisclosed Invalidity Allegations (Docket Entry No. 160), Defendant Google Inc.'s Motion to Exclude Testimony of SuperSpeed, LLC's Expert Robert Mills (Docket Entry No. 163), and Defendant Google Inc.'s Motion for Summary Judgment in Support of Invalidity, Non–Infringement, and No Willful Infringement (Docket Entry No. 164). For the reasons stated below, Google's motion for summary judgment will be denied as to invalidity and granted as to non-infringement and willful infringement, SuperSpeed's motion to strike and Google's motion to exclude will both be denied as moot.

I. Allegations of Infringement

The SuperSpeed patents relate to a method and system for caching I/O devices across a network embodied in a software product known as “SuperCache V1.3–01 through V2.1–27.”¹ SuperSpeed alleges that Google infringes thirteen claims from the two patents:

• Patent No. 5,577,226 : claims 27 & 30–33;

• Patent No. 5,918,244 : claims 15, 20–21, 25–26, & 31–33.²

SuperSpeed alleges that Google infringes these claims both literally and under the doctrine of equivalents “by making, using, selling, importing, and/or offering to sell within the United States several infringing products, including several Google apps and their constituents, including but not limited to Google Docs, Google Sheets, Google Slides and Google Drive.”³ SuperSpeed also alleges that Google is infringing these patents “by actively inducing the infringement of others.”⁴ Both SuperSpeed patents have been the subject of prior litigation: SuperSpeed v. Oracle Corporation, 4:04–cv–3409, in this district, and SuperSpeed v. IBM Corporation, 2:07–cv–89, in the Eastern District of Texas.

II. Google's Motion for Summary Judgment

Google argues that it is entitled to summary judgment on SuperSpeed's claims for three reasons: (1) the patents are invalid because EEC Systems, Inc. (“EEC”), the original assignee of the '226 and '244 Patents and SuperSpeed's predecessor in interest, offered for sale and then sold SuperCache to Pittsburgh National Bank (“PNC Bank”) on March 8, 1993, more than one year before May 6, 1994, the claimed priority date for both patents-in-suit; (2) SuperSpeed is unable to set forth evidence showing that the allegedly infringing products practice three limitations found in all of the asserted claims; and (3) SuperSpeed is unable to present evidence showing that any infringement was willful.⁵ SuperSpeed has responded with evidence refuting Google's first two grounds for summary judgment, but has neither argued nor submitted evidence refuting Google's argument that any infringement was not willful.⁶

A. Standard of Review

Summary judgment is authorized if the movant establishes that there is no genuine dispute about any material fact and the law entitles it to judgment. Fed.R.Civ.P. 56(c). Disputes about material facts are “genuine” if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). The Supreme Court has interpreted the plain language of Rule 56(c) to mandate the entry of summary judgment “after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). A party moving for summary judgment “must ‘demonstrate the absence of a genuine issue of material fact,’ but need not negate the elements of the nonmovant's case.” Little v. Liquid Air Corp., 37 F.3d 1069, 1075 (5th Cir.1994) (en banc ) (quoting Celotex, 106 S.Ct. at 2553 ). If the moving party meets this burden, Rule 56(c) requires the nonmovant to go beyond the pleadings and show by affidavits, depositions, answers to interrogatories, admissions on file, or other admissible evidence that facts exist over which there is a genuine issue for trial. Id. See Bellard v. Gautreaux, 675 F.3d 454, 460 (5th Cir.2012) (“[T]he evidence proffered by the plaintiff to satisfy his burden of proof must be competent and admissible at trial.”). “[T]he nonmoving party's burden is not affected by the type of case; summary judgment is appropriate in any case ‘where critical evidence is so weak or tenuous on an essential fact that it could not support a judgment in favor of the nonmovant.’ ” Little, 37 F.3d at 1075 (quoting Armstrong v. City of Dallas, 997 F.2d 62, 67 (5th Cir.1993) ).

A party opposing summary judgment must point to an evidentiary conflict in the record. Factual controversies are to be resolved in favor of the nonmovant, “but only when ... both parties have submitted evidence of contradictory facts.” Little, 37 F.3d at 1075. In reviewing the evidence “the court must draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133, 120 S.Ct. 2097, 2110, 147 L.Ed.2d 105 (2000). Nevertheless, expert declarations that are wholly conclusory—devoid of facts upon which the declarant's conclusions were reached—will not suffice to create fact issues for trial. TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1372 (Fed.Cir.2002) (“general assertions of facts, general denials, and conclusory statements are insufficient to shoulder the non-movant's burden”).

[T]he party opposing the motion for summary judgment of noninfringement must point to an evidentiary conflict created on the record, at least by a counter-statement of a fact set forth in detail in an affidavit by a knowledgeable affiant. Mere denials or conclusory statements are insufficient.

Id. “Summary judgment is appropriate in a patent case, as in other cases, when there is no genuine issue as to any material fact and the moving party is entitled to judgment as a matter of law.”Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed.Cir.1994).

B. Analysis

1. Invalidity

Asserting that SuperCache V1.2–11 embodied the asserted claims, Google argues that the on-sale bar articulated in 35 U.S.C. § 102(b) renders all asserted claims invalid because EEC sold two copies of SuperCache V1.2–11 to PNC Bank prior to the critical date of May 6, 1993, and PNC Bank reduced the invention to practice by using the SuperCache software on its network of clustered computers without experiencing unreliability caused by a software bug (“the MIT bug”) that SuperSpeed contends rendered all versions of SuperCache sold before the critical date inoperable.⁷ SuperSpeed argues that the on-sale bar does not invalidate its patents because (1) the only allegedly invalidating sale either took place after the critical date of May 6, 1993, or was for something other than SuperCache for clusters, and (2) the claimed inventions were not ready for patenting until September 3, 1993—four months after the critical date—when the inventor, Ian Percival, resolved the MIT software bug.⁸

(a) Applicable Law

The on-sale bar set forth in 35 U.S.C. § 102(b) provides in pertinent part that a person shall not be entitled to a patent if the invention was “on sale in this country, more than one year prior to the date of the application for patent in the United States.” 35 U.S.C. § 102(b).⁹ In Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998), the Supreme court established a two-part test for determining when the on-sale bar invalidates a patent. The Pfaff test requires that more than one year before the date of the patent application the invention be (1) the subject of a commercial sale or offer for sale and (2) ready for patenting. Id. at 311–12. The “critical date” for assessing the validity of a patent is the date one year before the patent application was filed. Id. at 307. Here, there is no dispute that the critical date is May 6, 1993, i.e., one year before the application for the '226 patent was filed.¹⁰ Whether the on-sale bar invalidates SuperSpeed's patents is a question of law based on underlying facts. See Hamilton Beach Brands, Inc. v. Sunbeam Products, Inc., 726 F.3d 1370, 1375 (Fed.Cir.2013). “Because patents bear a presumption of validity, 35 U.S.C. § 282, invalidity based on the on-sale bar must be established by clear and convincing evidence.” Gemmy Industries Corp. v. Chrisha Creations Ltd., 452 F.3d 1353, 1358 (Fed.Cir.2006) (citing Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1045–46 (Fed.Cir.2001) ). See SRAM Corp. v. AD–II Engineering, Inc., 465 F.3d 1351, 1357 (Fed.Cir.2006) (“a [movant] seeking to invalidate a patent at summary judgment must submit such clear and convincing evidence of facts underlying invalidity that no reasonable jury could...