Intellectual Ventures I, LLC, et al. v. Canon, Inc., et al., C.A. No. 13-473 – SLR, November 9, 2015

Robinson, J.   Defendants’ motion for summary judgment of non-infringement of 2 patents is denied and granted in part as to five patents. Defendants’ motion for summary judgment of invalidity of two patents is denied and granted in part as to eight patents.  Plaintiffs’ cross-motion of no invalidity of three patents is granted in part. Defendants’ motion to strike a supplemental expert report is denied. Defendants’ motion to sever and stay one patent is denied.

Two patents-in-suit relate to Wi-Fi technology, and the remaining eight patents relate to various technologies found in printers, scanners and cameras.  The court finds that there are genuine issues of material fact with respect to the two Wi-Fi patents.  An infringement claim identified in infringement contentions, but not in an expert report is dismissed with prejudice.  Claim construction of the term “station” remains for trial.  Plaintiffs are precluded from raising DOE for one patent for failure to respond substantively to defendants’ arguments. Expert disagreement equates to a material factual dispute and thus summary judgment is denied on both competing motions regarding the ‘728 patent. A thesis placed on the shelf of the library without cataloguing before the critical date did not provide public notice and was not prior art to the ‘728 patent. A motion to strike a supplemental expert report was denied because it responded to new opinion and relied on a document not previously not available. Defendants had identified new products on the last day of fact discovery.  A §101 challenge fails when the court finds the claims are not directed to an abstract idea under Alice.  Summary judgment of non-infringement is granted where a temporal aspect of a claim was not found in the accused product. The DOE argument fails because it would vitiate the claim limitation. Plaintiff has not shown accused products perform a determining step of a method patent and defendants’ motion for summary judgment of anticipation is granted as to this patent.  Defendants’ further do not infringe certain claims of the ‘914 patent. The court declines to sever and stay resolution of one patent pending an appeal to the Federal Circuit where the claim is construed differently from the construction assigned by the PTAB since expert discovery and dispositive motion practice is concluded and the trial date is near.