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Zipit Wireless Inc. v. Blackberry Limited

United States District Court, D. South Carolina, Greenville Division

October 12, 2016

Zipit Wireless Inc., Plaintiff,
v.
Blackberry Limited f/k/a/ Research in Motion Limited & Blackberry Corporation f/k/a Research in Motion Corporation, Defendants.

          ORDER AND OPINION

         Plaintiff Zipit Wireless, Inc. (“Plaintiff”) filed a Motion for Partial Summary Judgment on its allegations that Defendants Blackberry Limited, formerly known as Research in Motion Limited, and Blackberry Corporation, formerly known as Research in Motion Corporation, (together, “Defendant”)[1] infringed on three of its patent claims. (ECF No. 80.) For the reasons that follow, the court DENIES Plaintiff's Motion for Partial Summary Judgment.

         I. RELEVANT FACTUAL AND PROCEDURAL BACKGROUND

         Plaintiff filed a complaint in this court on October 30, 2013, and an amended complaint on February 6, 2014, alleging four counts of patent infringement against Defendant. (ECF Nos. 1, 28.) Count One, involves U.S. Patent No. 7, 894, 837 (the “'837 Patent”), entitled “Instant Messaging Terminal Adapted For Wireless Communication Access Points, ” which includes, as relevant here, Claim 1 as well as Claims 4 and 10, which are dependent on Claim 1. (ECF No. 28 at 3; ECF No. 28-1 at 29.) Claim 1 is as follows:

         A handheld instant messaging terminal comprising:

a handheld terminal housing;
a data entry device integrated in the terminal housing, the data entry device being configured to generate textual characters and graphical symbols in response to actuation of the data entry device;
a display mounted in the terminal housing to display textual characters and graphical symbols including the textual characters and graphical symbols generated by the data entry device;
an Internet protocol communications module located within the handheld terminal housing to generate data messages in an Internet protocol;
a wireless transceiver mounted within the handheld terminal housing and coupled to the Internet protocol communications module to generate wireless data messages that include the data messages in the Internet protocol, the wireless transceiver radiates the wireless data messages from an antenna coupled to the wireless transceiver; and
a control module located within the handheld terminal housing and coupled to the Internet protocol communications module, the control module including at least one processor that executes an application program to implement at least one instant messaging protocol for generation of instant messaging (IM) data messages that are compatible with an instant messaging service, the control module providing the IM data messages that are compatible with an instant messaging service to the Internet protocol communications module to enable the IM data messages to be communicated during at least one conversation session through the Internet protocol communications module and the wireless transceiver.

(ECF No. 28-1 at 29.) Plaintiff alleges that Defendant infringed on Claims 1, 4, and 10 of the '837 Patent by manufacturing and selling unspecified “WiFi-enabled instant messaging devices and applications.” (ECF No. 28 at 3-4.)

         On March 4, 2014, the court entered a scheduling order to which the parties had consented. (ECF No. 31.) The scheduling order called for Plaintiff to serve its disclosure of asserted claims and infringement contentions (the “Disclosure”) on Defendant by April 18, 2014; for Defendant to file its invalidity contentions by June 4, 2014; for the parties to file a joint claim construction and prehearing statement by September 3, 2014; for claim construction discovery to be completed by October 8, 2014; for the parties to submit briefs on claim construction by November 13, 2014; for the court to hold a hearing on claim construction by December 10, 2014; for fact discovery to be completed by April 8, 2015; for expert discovery to be completed by July 15, 2015; and for summary judgment motions to be submitted by August 12, 2015. (Id. at 2-9.)

         Although the scheduling order called for Plaintiff to serve its Disclosure on Defendant by April 18, 2014, Plaintiff served the Disclosure on May 2, 2014. (ECF No. 89-2.) Although the scheduling order called for Defendant to serve its invalidity contentions on Plaintiff by June 4, 2014, Defendants served their invalidity contentions on June 18, 2014. (ECF No. 89-5.)

         After receiving Plaintiff's Disclosure, Defendant served on Plaintiff its amended responses to Plaintiff's interrogatories on August 8, 2014. (ECF No. 80-8.) In its interrogatory, Plaintiff asked Defendant, “[f]or each and every claim . . . that Defendant contends it does not infringe, ” to “state the factual and legal bases of Defendant's non-infringement contention and identify any and all materials that support, contradict, or relate to Defendant's non-infringement contention.” (Id. at 8.) In response, Defendant answered that “[t]his action is in its early stages. This response is based on [Defendant]'s present understanding of the asserted claims and [Plaintiff]'s [Disclosure].” (Id. at 10.) After the qualification, Defendant stated that its

accused instrumentalities do not infringe the asserted patent claims because, based on [Plaintiff]'s [Disclosure], at least the following claim limitations are not found within the accused instrumentalities . . . “enable[ing] IM data messages to be communicated during at least one conversation session through the Internet protocol communications module” (‘837 Patent, claim 1 and claims dependent therefrom)

(Id.) The parties submitted a joint claim construction statement on September 3, 2014, meeting the deadline set by the scheduling order. (ECF No. 50.)

         On October 2, 2014, before any other items in the scheduling order had been completed, the court entered an order granting Defendant's motion to stay litigation in this matter, to which Plaintiff had consented. (ECF No. 55.) Defendant had filed four petitions in the Patent Trial and Appeals Board (“PTAB”) of the U.S. Patent and Trademark Office seeking inter partes review (“IPR”) of the four patents that are the subject of the instant case in an attempt to invalidate the patent claims by showing that they were unpatentable. (ECF No. 54 at 1-2.) The court stayed all deadlines in this matter until two weeks after the PTAB issued its final decisions. (ECF No. 55; see also ECF No. 63 (reiterating stay).) The PTAB issued its final decisions on the four petitions for IPR on March 29, 2016. (ECF No. 75 at 2; ECF Nos. 75-1, 75-2, 75-3, 75-4.) The PTAB concluded that Defendant had failed to show that Claims 1, 4, and 10 of Patent '837 were unpatentable. (ECF No. 75-2 at 27-28.) Pursuant to the court's orders, the stay on the proceedings was lifted on April 12, 2016.

         Twenty-two days after the stay was lifted, on May 4, 2016, Plaintiff filed the instant motion for partial summary judgment on it claims of infringement on Claims 1, 4, and 10 in Patent '837. (ECF No. 80.) Plaintiff argues that, because Defendant is estopped from asserting that the patent claims at issue are invalid on any ground Defendant raised or could have raised in the PTAB proceeding, summary judgment is proper on the listed patent claims if the court determines that Defendant infringed on them. (Id. at 2-3.) Plaintiff lists 37 of Defendant's products[2] as “Infringing Products” as accused devices. (Id. at 4-5.)

         Plaintiff argues that Defendant has asserted that only one limitation found in Claims 1, 4, and 10 is not present in each of these accused products. (Id. at 6-7.) More specifically, Plaintiff argues that Defendant has asserted that the only claim limitation found in Claim 1 is not present in any of the accused products, namely that it “enable[s] the [instant messaging (“IM”)] data messages to be communicated during at least one conversation session through the Internet protocol communications module.” (Id. at 6-7.) In support of this assertion, Plaintiff points to Defendant's response to its interrogatory. (Id. at 7 (citing ECF No. 80-8 at 10-11).) In Plaintiff's estimation, the summary judgment motion comes down to this one limitation. Plaintiff argues that it is entitled to summary judgment because the court must construe the limitation in its favor and then must find that there can be no genuine dispute that Defendant's accused devices contain the limitation. (See ECF No. 80 at 14-18.)

         First, Plaintiff argues that the court must construe the relevant terms of the limitation, “conversation session” and “Internet protocol communications module, ” in its favor. (Id. at 14.) Plaintiff states that “conversation” should be given its dictionary definition[3] because Defendant's expert witness in the PTAB proceeding testified, in his deposition, that the word should be given its plain and ordinary meaning and because the parties never ascribed to the word anything other than its plain and ordinary meaning. (Id. at 14-15.) Similarly, Plaintiff contends the court should construe the word “sessions” by its dictionary definition[4] because neither party has sought to ascribe to it any other meaning. (Id. at 15.) Plaintiff also contends that “communications module” should be understood by its plain and ordinary meaning-“hardware (e.g., processor) and/or software components” because Defendant agreed to that construction in the PTAB proceeding. (Id.)

         Second, Plaintiff argues that there can be no dispute that the 37 accused devices contain the limitation as it construes it. It contends that there can be no dispute that all of the devices contain an “Internet protocol communications module, ” and, for support, it lists as an example the online specifications of the Blackberry Z30 smart phone, which it attaches as an exhibit. (Id. at 16.) It states, without citation, that the other accused devices contain similar features. (Id.) Plaintiff likewise contends that there is no genuine dispute that the accused devices engage in “conversation sessions.” (Id.) In support of this contention, Plaintiff notes that Defendant's expert witness called a third-party instant messenger application a “conversation session” in his deposition testimony during the PTAB proceeding, that a user manual for the Blackberry Curve 8900 smartphone describes instant messaging as “[s]tart[ing] a [c]onversation, ” and that articles in technology media often refer to instant messaging as conversations. (Id. at 16-18.)

         In its response, Defendant first contends that summary judgment is premature because it has not had sufficient opportunity to conduct discovery. (ECF No. 89 at 12-13.) In this regard, Defendant appears to argue that, by filing the instant summary judgment motion, Plaintiff is attempting to circumvent the court's scheduling order. (Id.) It also argues that Plaintiff failed to list the accused devices in its Disclosure with the specificity required by the scheduling order. (Id.) It ...


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