X One, Inc. v. Uber Techs., Inc.

440 F.Supp.3d 1019

X ONE, INC., Plaintiff,

v.UBER TECHNOLOGIES, INC., Defendant.

Case No. 16-CV-06050-LHK

United States District Court, N.D. California, San Jose Division.

Signed February 12, 2020

Jacob Adam Schroeder, Jinwoo Kim, Nicholas Domenic Petrella, Morgan Elizabeth Smith, Finnegan Henderson Farabow Garrett & Dunner, LLP, Palo Alto, CA, Doris Johnson Hines, Pro Hac Vice, Jones Forrest Alexander Jones, Jeffrey C. Totten, Pro Hac Vice, Marcus Anthony Ronald Childress, Pro Hac Vice, Susan Yates Tull, Pro Hac Vice, Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, DC, for Plaintiff.

Michael A. Jacobs, Christopher Leonard Robinson, Esther Kim Chang, Jianing Liu, Thomas Julian Pardini, Morrison & Foerster LLP, Christine Marie Morgan, Doyle Johnson, John P. Bovich, Jonah Dylan Mitchell, Reed Smith LLP, San Francisco, CA, Brian Dwyer Roche, Reed Smith LLP, Chicago, IL, Eric Chingyun Pai, Rudolph Kim, Stephen J. H. Liu, Morrison & Foerster LLP, Palo Alto, CA, Gerard M. Donovan, Pro Hac Vice, Reed Smith LLP, Washington, DC, for Defendant.

AMENDED ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION FOR SUMMARY JUDGMENT AND DENYING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT

LUCY H. KOH, United States District Judge

This Order supersedes ECF No. 348.

Before the Court are Defendant Uber Technologies, Inc.'s ("Uber") motion for summary judgment on the grounds of noninfringement and invalidity, ECF No. 299 ; Plaintiff X One, Inc.'s ("X One") motion for summary judgment of validity, ECF No. 294 ; and the parties' three motions to strike, ECF Nos. 250, 252, 258, and three motions to exclude, ECF Nos. 292, 297, 301. All motions have been fully briefed. Having considered the submissions of the parties, the relevant law, and the record in this case, the Court GRANTS Uber's motion for summary judgment of noninfringement, DENIES as moot Uber's motion for summary judgment of invalidity, DENIES as moot X One's motion for summary judgment of validity, and DENIES as moot the parties' six motions to strike and motions to exclude.

I. BACKGROUND

A. Factual Background

1. The Parties

Plaintiff X One is a Delaware corporation with its primary place of business in Union City, California. ECF No. 1 ("Compl.") ¶ 1. X One is the original patent applicant and assignee of the X One Patents. Id. Ex. A. The patented technology was developed by X One's principal, Richard Haney. Id. ¶ 7. Defendant Uber is a Delaware corporation with its primary place of business in San Francisco, California. Id. ¶ 2.

2. The X One Patents

At issue are U.S. Patent Nos. 8,798,647 (the " ‘647 Patent’ ") and 8,798,593 (the " '593 Patent") (collectively, the "X One Patents"). Compl. ¶ 11. The '593 Patent is titled "Location Sharing and Tracking Using Mobile Phones or Other Wireless Devices." U.S. Patent No. 8,798,593 at [54]. The '647 Patent is titled "Tracking Proximity of Services Provider to Services Consumer." U.S. Patent No. 8,798,647 at [54]. The '647 Patent is a continuation of the '593 Patent, and thus the two patents share the same specification. See Monsanto Co. v. Scruggs , 459 F.3d 1328, 1337 (Fed. Cir. 2006) ("The patents are continuations or divisionals of a common parent application and therefore necessarily have almost identical specifications."). For simplicity, the Court's citations to the text and figures of the X One Patents refer to the '593 Patent specification.

a. Specification

The X One Patents relate to "[a] system for exchanging GPS or other position data between wireless devices." '593 Patent, at [57] (Abstract). The invention thus involves "phones [or] other wireless devices" that "are programmed with software ... to allow mutual tracking and optional position mapping displays of members of groups." Id. at col. 2:35–40. These devices "work with a ... server coupled to the internet." Id. Critically, these devices "must be web enabled to send and receive TCP/IP or other protocol packets over the internet to the ... server." Id . at col. 2:25–27. These devices also contain GPS receivers, and, in preferred embodiments, "sufficiently large liquid crystal displays." Id . at col. 2:23–24.

Figure 2A illustrates exemplary communications between these devices according to the invention of the X One Patents.

Id. at Fig. 2A.

As Figure 2A illustrates, the requesting phone sends packets through the local phone carrier system, which is then relayed through the internet to a server. Id. at col. 5:59–6:28. The server then obtains the relevant data from the phones associated with individuals on a buddy list for the requesting phone. Id. The server then relays the requested information—location data for each phone associated with a "buddy" and a map showing that location—back to the requesting phone through the internet and carrier service. See also id. at col. 2:51–64 ("[T]he process of the invention [ ] allows exchanging and mapping of position data with persons on a Buddy List.").

However, the specification is not solely limited to the use of a server, and outlines a more generalized process as well for the functioning of the invention. Figure 13 of the X One Patents provides a "flowchart of the method of exchanging GPS position data among cell phones of a watch list":

Id. at Figs. 13A, 13B.

In this illustrated method, a buddy location update request is received, the persons in the buddy list are identified, and the requesting device sends, through the cellular system, its location data to the phones in the buddy list. Id. Those phones receive the information, interpret it, and display that location on a map, and then obtain their own position and send their location to the people on their buddy list. Id.

3. The Asserted Claims

X One asserts that Uber infringes claims 1–2, 5–6, 9, and 19 of the '593 Patent and claims 1, 4–11, 13, 22–25, 27–28, 31–37, 39–42, and 45 of the '647 Patent. ECF No. 228.

For the '593 Patent, claims 1 and 19 are independent claims. Claims 2, 5–6 and 9 all depend on claim 1.

For the '647 Patent, claims 1, 22, and 28 are independent claims. Claims 4–8, 10–11, and 13 all depend on independent claim 1. Claim 9 further depends on dependent claim 8. Furthermore, claims 23–25, and 27 all depend on independent claim 22. Lastly, claims 31–34, 36–37, 39–42, and 45 all depend on independent claim 28. Claim 35 further depends on dependent claim 34.

In response to the Court's claim narrowing order, X One has selected claim 19 of the '593 Patent and claims 4, 22, 23, 24, and 28 of the '647 Patent on which to proceed through trial first. See ECF No. 280 at 4. As such, the parties' briefing addresses only these six claims.

B. Procedural History

On October 19, 2016, X One filed the instant patent infringement suit. In its complaint, X One alleged that Uber "has infringed and continues to infringe one or more claims of the [X One Patents]." Compl. ¶ 13. The products and services accused included "Uber's mobile device applications on iOS, Android, and Microsoft operating systems" as well as "the Uber ride-sharing, car-pooling, and delivery services." Id.

On December 9, 2016, Uber moved to dismiss all of the asserted claims of the X One Patents for failure to claim patent-eligible subject matter pursuant to 35 U.S.C. § 101. ECF No. 24. The Court denied Uber's motion on March 6, 2017. ECF No. 52.

On May 26, 2017, the parties filed a Joint Claim Construction and Prehearing Statement, identifying disputed claim terms, proposed constructions, and citations to supporting evidence. ECF No. 62. After receiving claim construction briefing, the Court held a technology tutorial and claim construction hearing on August 17, 2017. ECF No. 70. The following day, the Court issued its Claim Construction Order, which construed four terms from the '593 Patent and three terms from the '647 Patent. ECF No. 73 ("Claim Constr. Order") at 45–46.

Prior to the Court's claim construction proceedings, on April 7, 2017, Uber filed a Petition for Inter Partes Review ("IPR") of the '593 Patent, and on April 11, 2017, Uber filed a Petition for IPR of the '647 Patent. See ECF No. 78 at 1. On October 16, 2017, the PTO ordered institution of both IPRs, and shortly thereafter, on October 24, 2017, the Court stayed the present case pending resolution of the IPRs. Id. Ultimately, the IPRs upheld the validity of both the '593 and '647 Patents on October 12, 2018. ECF No. 302-5 at B906 ( '593 Patent IPR Final Written Decision); ECF No. 302-2 at A926 ( '647 Patent IPR Final Written Decision). Approximately one month later, on November 15, 2018, the Court lifted the stay, and discovery resumed. ECF No. 89.

C. Pending Motions

On October 31, 2019, X One filed a motion for summary judgment of validity under 35 U.S.C. §§ 102 and 103. ECF No. 294. On November 18, 2019, Uber filed an opposition to X One's motion. ECF No. 317. On November 26, 2019, X One filed a reply. ECF No. 339.

Similarly, on October 31, 2019, Uber filed a motion for summary judgment of noninfringement and invalidity under 35 U.S.C. § 101. ECF No. 299 ("Mot."). On November 18, 2019, X One filed an opposition to Uber's motion. ECF No. 323 ("Opp'n"). On November 26, 2019, Uber filed a reply. ECF No. 338 ("Reply").

In addition to the parties' summary judgment motions, both parties have filed motions to strike and motions to exclude. On August 20, 2019, Uber filed a motion to strike portions of Dr. Sigurd Meldal's expert report on infringement. ECF No. 250. On August 21, 2019, X One filed a motion to strike portions of Uber's expert report on invalidity. ECF No. 252. On August 27, 2019, Uber filed a motion to strike portions of the expert report of X One's damages expert, Dr. Lauren Stiroh. ECF No. 258. On October 31, 2019, X One filed a motion to exclude the testimony of Uber's damages expert, Vincent Thomas, ECF No. 292, and Uber filed a motion to exclude the testimony of X One's damages expert, Dr. Lauren Stiroh. ECF No. 297. Lastly, on November 1, 2019, Uber filed a motion to exclude X One's survey expert, Ms. Sarah Butler. ECF No....