Htc Corporation v. Ipcom Gmbh & Co., Kg ( 2012 )

UNITED STATES DISTRICT COURT
FOR 'I`HE DISTRICT OF COLUMBIA
HTC CORPORATION, et al.,
Plaintiffs,
v. Civil Action No. 08-1897 (RMC)
IPCOM GMBH & CO., KG, PUBLIC VERSION
Defendant.
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OPINION REGARDING IPCOM’S MOTION FOR PARTIAL RECONSIDERATION
AND SUPPLEMENTATION OF RECORD REGARDING THE 216 PATENT
By Opinion and Order issued March 16, 2012, this Court held that products sold by
HTC Corporation and HTC America, Inc. do not infringe U.S. Patent No. 5,390,216, owned by
IPCom GMBH & Co., KG. IPCom now moves for partial reconsideration and seeks to supplement
the record, to show infringement under the doctrine of equivalents and to limit the scope of the ruling
in HTC’s favor. Neither of these goals provides a basis for reconsideration. IPCom’s motion will
be denied, except insofar as it seeks to clarify that the Court’s finding of noninfringement with regard
to Claim One substep 3.2 of the 216 Patent applies only to HTC ‘ devices that use chips manufactured
by Qualcomm Inc.
I. FACTS
The Court determined that HTC products do not infringe substeps l.2 and 3.2 of
Claim One of the 216 Patent, a patent that claims a method for synchronizing a cell phone with a cell
tower. Claim One states:
' HTC Corporation and HTC America, Inc. are collectively referred to as "HTC."
A method of synchronizing a mobile radiotelephone in a cellular
digital mobile radiotelephone network comprising a plurality of fixed
radiotelephone stations and a plurality of mobile radio stations
operating in accordance with a GSM standard or its equivalent, in
which each communication frequency assignment is subdivided into
interleaved time slots, a plurality of said time slots together
comprising a frame, comprising the following steps which are carried
out in the mobile radiotelephone:
(1) conducting an initial synchronization by means of a frequency
correction burst substantially fully occupying a time slot with an
unmodulated wave corresponding to repetition of bits of the same
binary logic value;
(2) maintaining normal synchronization during communication by
means of interspersed normal synchronization bursts, each normal
synchronization burst containing a training sequence occupying less
than a third of a time slot; and
(3) performing extended synchronization during communication as
a background procedure by means of interspersed frequency
synchronization bursts, each frequency synchronization burst
containing an extended training sequence occupying less than an
entire time slot and more than a third of a time slot, and wherein:
said step of conducting said initial synchronization comprises the
substeps of:
(1.1) conducting a coarse frequency synchronization,
(].2) conducting a coarse frame synchronization over a
plurality of said time slots which comprise a frame,
(l .3) conducting a fine frequency synchronization, and
(l.4) conducting a fine frame synchronization over said
plurality of time slots which comprise a frame;
said step of maintaining said normal synchronization comprises the
substeps of:
(2.1) conducting a frame synchronization with fine frequency
synchronization, and
(2.2) carrying out preliminary data signal processing; and
said step of performing said extended synchronization comprises the
substeps of:
(3.1) conducting a coarse frame synchronization, and
(3.2) conducting a fine frame synchronization with fine
frequency synchronization
216 Patent 8:62-9:46 (emphasis added to show substeps at issue in this Opinion).
The accused HTC products are mobile phones that are designed and manufactured
by HTC but include chipsets supplied by Texas Instruments or Qualcomm Inc. The chipsets include
modem processors used for radio communications and digital signal processors that perform
mathematical operations. ln granting summary judgment to HTC, the Court found that HTC’s
accused products do not infringe Claim One of the 216 Patent because none performs each of the
substeps of Claim One. See Mem. Op. Regarding HTC’s Mot. for Summ. J . of Noninfringement or
invalidity of the 216 Patent [Dkt. 324] ("March 16 Op.").z
The decision on summary judgment naturally relied on the Cour“t’s construction of
the 216 Patent. More specifically, in its Markman3 ruling, the Court construed substep l.2,
"conducting a coarse frame synchronization over a plurality of said time slots which comprise a
frame," to mean "controlling a first frame synchronizing process that utilizes a corrected phase
course of a detected frequency correction burst to identify a range within which the beginning of a
2 Because Claims Two and Five through Ten of the 216 Patent depend from Claim One,
thereby incorporating its limitations, the Court held that the accused products do not infringe those
Claims either. See March 16 Op. at 26.
3 lnMarkman v. Westview]nstruments, 1nc., 52 F.3d 967 (Fed. Cir. 1995), the F ederal Circuit
determined that courts, not juries, must interpret the meaning of patent claims.
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frame falls." Markman Op. at 20 (emphasis added). The Court construed substep 3.2, "conducting
a fine frame synchronization with fine frequency synchronization" to mean "controlling a process
to monitor and maintain the frame timing in step between the mobile station and neighboring base
station while also maintaining the frequency within a desired operating accuracy between the mobile
station and the neighboring base station, by producing frame shift and frequency correction
parameters when crossing a cell boundary." Markman Op. at 26-27 (emphasis added). Because
HTC’s phones do not (1) "utilize a corrected phase course" or (2) "identify a range" as required by
substep 1.2, the Court granted summary judgment to HTC. March 16 Op. at 13-18. 1n addition, the
Court found that the accused products do not maintain frequency synchronization "when crossing
a cell boundary" as required by substep 3.2 and for that reason as well did not infringe the 216
Patent.
IPCom does not seek reconsideration of the ruling that HTC cell phones do not
"identify a range" as required by substep 1.2. Instead, IPCom contends that the March 16 Opinion
modified the Court’s original claim construction regarding the terms "utilize a corrected phase
course" in substep 1.2 and "while also" in substep 3.2. IPCom wants to supplement the record with
evidence of infringement under the doctrine of equivalents, which it says it did not previously argue
because of the Court’s initial claim construction Assuming victory on this point, IPCom seeks an
order limiting judgment in HTC’s favor to one of no literal infringement as to the . . phase course"
and "while also" terms from substep 1.2 and substep 3.2." Without objection from HTC, IPCom also
4 By asking for such "limitation" of the judgment, IPCom actually seeks an order vacating
the judgment in part under the doctrine of equivalents, insofar as the Court found no infringement
of the contested terms from substeps 1.2 and 3.2. IPCom notes that granting its motion in full would
leave the judgment of noninfringement intact conceming the substep 1.2 "identify a range"
requirement.
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asks the Court to clarify that its judgment of non infringement of substep 3.2 applies only to HTC
devices that use chips manufactured by Qualcomm Inc. Only the request for clarification will be
granted.
II. STANDARD 0F REVIEW
F ederal Rule of Civi1 Procedure 54(b), which governs the motion, provides that "any
order or other decision, however designated, that adjudicates fewer than all the claims or the rights
and liabilities of fewer than all the parties . . . may be revised at any time before the entry of
judgment adjudicating all the claims and all the parties’ rights and liabilities." Fed. R. Civ. P. 54(b).
Relief under Rule 54(b) is available "as justice requires." DL v. Dist. of Columbia, 274 F.R.D. 320,
324 (D.D.C. 2011). "[A]sking ‘what justice requires’ amounts to determining, within the court’s
discretion, whether reconsideration is necessary under the relevant circumstances." Cobell v,
Norton, 355 F. Supp. 2d 531, 539 (D.D.C. 2005). Circumstances that may be relevant include
whether a court has "‘patently misunderstood a party, has made a decision outside the adversarial
issues presented to the Court by the parties, has made an error not of reasoning, but of apprehension,
or where a controlling or significant change in the law or facts [has occurred] since the submission
of the issue to the Court."’ Ficken v. Golden, 696 F. Supp. 2d 2 1 , 35 (D.D.C. 2010) (quoting Cobell
v. Norton, 224 F.R.D. 266, 272 (D.D.C. 2004)) (alterations in original). A court’s discretion under
Rule 54(b) is limited by the law of the case doctrine and "subject to the caveat that, where litigants
have once battled for the court’s decision, they should neither be required, nor without good reason
permitted, to battle for it again." Singh v. George Washington University, 383 F. Supp. 2d 99, 101
(D.D.C. 2005).
III. ANALYSIS
A. Substep 1.2 _ Coarse Frame Synchronization
IPCom contends that the Court’s opinion on summary judgment changed its
interpretation of substep 1 .2 from the construction in the Markman opinion. Based on this perceived
change, IPCom argues that it should be permitted to supplement the instant record to include
evidence that the accused products perform substantially the same functions in substantiallythe same
ways to "utilize a corrected phase course" as required by substep 1.2 _ and thus infringe the 216
Patent under the doctrine of equivalents. 1n its summary judgment papers, IPCom offered only a
conclusory contention that HTC’s products infringe substep 1.2 under the doctrine of equivalents;
it provided no particularized evidence or argument regarding why the Court should find the
differences between the accused HTC products and the 216 Patent insubstantial. Without rnore, the
Court held that the doctrine of equivalents argument failed. IPCom now seeks to supply such
evidence, justifying its late motion with the alleged material change in construction of the 216
Patent.
The Court construed substep 1.2, "conducting a coarse frame synchronization over
a plurality of said time slots which comprise a frame," to mean "controlling a first frame
synchronizing process that utilizes a corrected phase course of a detected frequency correction burst
to identify a range within which the beginning of a frame falls." Markman Op. at 20 (emphasis
added). The summary judgment opinion concluded that the accused products do not infringe substep
1.2, in part, because they do not calculate a corrected phase course; "[b]ecause [the accused
products] do not calculate phase angles, they do not calculate sequences of phase angles (a phase
course), and they do not use such sequences to perform coarse frame synchronization." March 16
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Op. at 16. The Court explained:
The do not
calculate hase an les.
Oblon Decl., Ex. 7
(Stark Report 5/6/201 1) 11 1 10. The HTC products do not take 1 and
Q samples, convert them into phase angles, and then detennine the
rate of chan e of the an les. Oblon Decl., Ex. 6 Stark De . at 98-
Oblon Decl., Ex. 8 (Overby Report) 1111 230-239.
Notably, Dr. Stark, to whom HTC frequently refers for support, is
IPCom’s expert
Id. at 14-1 5. The Court further reasoned:
l
l
l
1 1n order to create a phase course, hase an les must first be
l
l
l
l
l
but do not calculate phase angles. IPCom has failed to cite any
evidence that HTC products calculate phase angles. Inasmuch as
HTC products do not calculate phase angles, they do not create a
phase course or use a corrected phase course. Accordingly, summary
judgment will be granted in favor of HTC on this issue. The accused
products do not infringe substep 1.2, and thus do not infringe Claim
One, of the 216 Patent.
]d. at 16.
Contrary to lPCom’s assertion, the Court did not change its interpretation of the 216
Patent. lt merely applied the claim construction set forth in the Markman Opinion. The parties’
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experts agreed that a "phase course" is a sequence of phase values. March 16 Op. at 15. The Court
pointed to the specification:
The specification teaches, "[a]ll of the synchronization routines which
take place with the help of the synchronizing processor 28 are based
on the processing of the phase angles calculated from the 1 and Q
components." Id. at 5:11-15 (referring to Fig. 2) (emphasis added).
The phase angle of an l, Q pair is a ratio; "[t]he relative 1 and Q
magnitudes (i.e. the proportion) in each case define a phase angle."
216 Patent, 4:30-34 (emphasis added).
Id. 1n addition, lPCom’s expert, Dr. Wayne Stark, conceded that HTC products do not take 1 and
Q samples, convert them into phase angles, and then determine the rate of change of the angles. Id.
at 14.
lPCom points to another expert, Dr. David Goodman, who stated that a phase course
is an "inherent property" of the 1 and Q signals. See lPCom’s Opp’n [Dkt. 268] at 18 (citing
Goodman Dep. at 1 13 (July l, 2011)). lPCom reasons that since a phase course is an “inherent
property" of the si gnals, a phase course is always utilized. But Dr. Goodman’s statement was made
without support or explanation, and the Court rejected his assertion in light of the language of the
specification and Dr. Stark’s concession that HTC products do not calculate phase angles.
lPCom further contends that it did not understand that the Court had interpreted 1.2
as requiring calculation of phase angles due to language in the Markman Opinion construing the term
"synchronizing." The Court defined "syrichronizing," as used in the first line of Claim One, as "[a]
method of synchronizing a mobile radiotelephone in a cellular digital mobile radiotelephone
network." 216 Patent at 8:62-64. The Court adopted lPCom’s proposed definition, finding that
"synchronizing" means "[b]ringing the mobile station’s operation in step with the corresponding
operation of a base station." Markman Op. at 14. The Court rejected HTC’s proposed definition -
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that "synchronizing" means "[b]ringing a mobile station’s operation in step with the corresponding
operation of a base station by performing processes that evaluate a continuously running phase angle
calculated from burst signals received from the base station." Id. at 12-14. The Court explained:
While the specification in the 216 Patent describes evaluation of
phase angles, no expressly limiting language is used in Claim One.
The focus of Claim One is the method of sequential steps and
substeps, not the precise contours of how one practices the invention.
Claim One is not bounded by the limitations of relying on evaluating
phase angles, as these limitations appear in dependent claims and not
in Claim One. Given the structure of the 216 Patent, the Court cannot
conclude that Claim One is so limited.
Id. at 13-14.
lPCom uses the Court’s interpretation of the word "synchronizing" as its basis for
ignoring the Court’s express and specific interpretation of substep 1.2 _ requiring the use of a
"corrected phase course" with attendant calculation of phase angles. On summary judgment, IPCom
could not reject or ignore the Court’s construction of substep 1.2 and complain later. 1f1PCom
thought that the Markman Opinion needed clarification, it should have filed a motion for clarification
or reconsideration of the Markman Opinion. lt did not do so. Instead, the case progressed with HTC
arguing that its products did not calculate phase angles as required by substep 1 .2 and IPCom arguing
that the accused products did, in fact, calculate and use such phase angles.
HTC’s expert, Dr. Michael Kotzin, submitted a report asserting that the accused
products do not infringe substep 1 .2 literally or by equivalents because the products do not calculate
or utilize phase courses. HTC’s Notice of Filing CDs [Dkt. 295], Kotzin Decl., Ex. 2 (Kotzin
6/24/ 1 1 Rebuttal Report) 1111 303-312, 340-43. ln rebuttal, IPCom filed a supplemental report of Dr.
Stark, but Dr. Stark did not respond to Dr. Kotzin’s opinions regarding substep 1.2. See lPCom’s
Statement of Facts and Exhibits [Dkt. 268], Ex. 1 (Stark Decl.), Ex. C (Stark 7/7/ 11 Supp. Rep.).
After this series of dueling expert reports, HTC moved for summary judgment on substep 1.2,
relying on the Markman Opinion and Dr. Kotzin’s Rebuttal Report. 1n opposition, IPCom argued
that the accused products literally infringe with only a passing glance at infringement by equivalence.
Although a court has broad discretion to permit parties to supplement the record
when claims construction has changedf the Court’s construction of the Patent here did not change;
it merely applied its specific construction of substep 1.2 to the parties’ arguments concerning literal
infringement of that substep. While IPCom may now view the Markman ()pinion’s construction of
"synchronizing" from the first line of Step 1 as inconsistent with its construction of "utilizing a
corrected phase course" in substep 1.2, lPCom’s current view does not change the Court’s
construction of substep 1 .2 and it is that construction that was determinative on summary judgment
lPCom cannot now raise a new doctrine of equivalents claim; not only is expert discovery long since
closed and the prejudice to HTC clear, but there is no basis under the rules or precedent to re-open
the case. See, e.g., Procter & Gamble Co. v. McNeil-PPC, Inc., 615 F. Supp. 2d 832, 838-39 (W.D.
Wis. 2009) (striking supplemental expert report where plaintiff’ s failure to address doctrine of
equivalents in the initial expert reports was "plaintiff’ s choice" and plaintiff did not show good cause
for its failure); Mosaz`d Techs. Inc. v. SamsungElec. Co., Ltd., 362 F. Supp. 2d 526, 543, 559 (D.N.J.
2005) (denying patent holder’s motion to supplement expert report in order to add new equivalents
argument, where the patentee had made only a conclusory equivalents argument in the initial expert
5 See, e.g., Lexion Med., LLC v. Northgate Techs., Inc., 641 F.3d 1352, 1358 (Fed. Cir. 2011)
(because of new claim construction, district court had discretion to permit record supplementation
with new declarations consistent with the new interpretation of the patent); Asyst Techs., Inc. v.
Emtrak, Inc., 544 F.3d 1310, 1317 (Fed. Cir. 2008) (because of a change in the claim construction,
the district court had discretion to permit a party to amend its defenses).
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report)." Because IPCom failed to timely raise any argument that it had regarding infringement of
substep 1.2 under the doctrine of equivalents, it has waived such argument. The motion for
reconsideration and supplementation of the record will be denied with regard to substep 1.2.
B. Substep 3.2 - Extended Synchronization
lPCom’s argument regarding substep 3.2 starts in the same place as its argument
regarding substep 1.2. Alleging that the Court changed its interpretation of substep 3.2, lPCom
contends that the Court should partially vacate its judgment and allow lPCom to supplement the
record to include evidence of infringement under the doctrince of equivalents. This part of lPCom’s
motion will also be denied.
The Court construed "(3.2) conducting a fine frame synchronization with fine
frequency synchronization" to mean "controlling a process to monitor and maintain the frame timing
in step between the mobile station and neighboring base station while also maintaining the frequency
within a desired operating accuracy between the mobile station and the neighboring base station, by
producing frame shift and frequency correction parameters when crossing a cell boundary."
Markman Op. at 26-27 (emphasis added). At summary judgment, the parties contested whether the
phrase "while also" required fine frame synchronization to be conducted in the very same frame as
° See also Regents ofUnz`v. ofMinn. v. AGA Med. Corp., 835 F. Supp. 2d 71 l, 729 (D. Minn.
2011) (finding that defendant "clung to an unreasonable, strategically motivated reading of the
Court’s Markman order throughout the discovery period" and thus "the Court’s rejection of that
unreasonable reading in the Court’s summary judgment order does not justify [defendant] in offering
new, untimely expert opinions . . . ."); Zelinski v. Brunswick Corp., 996 F. Supp. 757, 764-65 (N.D.
lll. 1997) (granting summary judgment of noninfringement where the patentee "hoped" for a finding
of literal infringement and failed to take discovery on its equivalence arguments; "Courts need not
aid non-movants who have occasioned their own predicament."); In re Perry, 918 F.2d 931, 934
(Fed. Cir. 1990) ("[A]n ‘empty head and pure heart’ defense will not excuse objectively
unreasonable conduct.").
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fine frequency synchronization, lPCom contended that the process of monitoring and maintaining
frame synchronization "while also" maintaining frequency synchronization was satisfied by HTC’s
accused products because
. Noting that a synonym for "while also" is "simultaneously," the
Court determined that the HTC products that use Qualcomm chipsets do not infringe because
_ March 16 op. 3121-23_
Similar to the equivalence argument regarding substep 1.2, lPCom failed to detail
specific evidence explaining why the differences between the HTC products that use Qualcomm
chipsets and the 216 Patent are insubstantial and the Court found that the doctrine of equivalents
argument regarding substep 3.2 failed. lPCom now seeks to supplement the record with evidence
of equivalence, again justifying this belated addition to the record by its assertion that the Court
somehow altered its interpretation of the 216 Patent.
The Court’s use of the synonym "simultaneous" for "wliile also" does not constitute
a change in its interpretation of the Patent. Even if lPCom did not understand that the Court viewed
"while also" as meaning "simultaneously," lPCom knew that the question of whether the accused
products conduct frame synchronization "while also" maintaining frequency synchronization was
at issue. HTC made its position clear: HTC products that use Qualcomm chipsets do not perform
frame synchronization while also performing frequency synchronization because
IPCom was not
somehow surprised. lf it had an argument for infringement under the doctrine of equivalents, the
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time to make it was in response to HTC’s motion for summary judgment. IPCom cannot now have
a second bite at the apple.
The motion for reconsideration and supplementation of the record will be denied with
regard to substep 3.2, except that the finding of noninfringement regarding substep 3.2 will be
clarified to limit it to HTC devices that use chips manufactured by Qualcomm lric.
IV. C()NCLUSION
For the reasons set forth above, lPCom’s motion for partial reconsideration and
supplementation of the record [Dkt. 332] will be granted in part and denied in part The motion will
be granted only as follows: the Order will clarify that the finding of noninfringement with regard
to Claim One substep 3.2 of the 216 Patent applies only to HTC devices that use chips manufactured
by Qualcomm Inc. The motion will be denied in all other respects. A memorializing Order
accompanies this Opinion.
Date: August 28, 2012 /s/
ROSEMARY M. COLLYER
United States District Judge
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