324 F. Supp. 3d 470
D. Del.2018Background
- Plaintiff sued Activision alleging infringement of six patents by four games (World of Warcraft, Call of Duty titles, Destiny); asserted specific claims from each patent.
- Motions: Plaintiff moved for summary judgment on infringement and validity and to exclude Activision's damages expert; Activision moved for summary judgment (invalidity and non-infringement) and moved to exclude several plaintiff experts. Court heard argument and ordered supplemental briefing.
- Key contested factual/legal issues: prior-art availability of Kegel and ActiveNet references; indefiniteness and proposed correction of claim 19 of the '634 patent; whether Activision "makes, uses, or sells" accused networks or hardware when it distributes/controls game software; patent-eligibility of "computer readable medium" claims that include carrier waves; several expert Daubert challenges.
- Court ruled: denied plaintiff's summary judgment and motion to correct claim 19; granted Activision summary judgment that all asserted claims of U.S. Patent No. 6,829,634 and claims 11, 15, 16 of U.S. Patent No. 6,732,147 are invalid; granted non-infringement summary judgment for the '344, '966, and '497 patents limited to the accused CoD and Destiny games; various Daubert rulings excluding portions of damages opinions.
- Court applied Centillion precedent distinguishing system claim infringement (requiring combination/operation of all claim elements) from mere supply of software; evaluated §101 issues for media claims covering carrier signals and excluded certain damages opinions as unreliable or improperly based on a jury verdict.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Indefiniteness and correction of claim 19 of the '634 patent | Claim 19 contains an obvious drafting error and should be corrected to restore meaning | Claim 19 is nonsensical; any proposed correction is subject to reasonable debate and changes claim scope | Denied correction; claims 19 and 22 of '634 invalid as indefinite (SJ for Defs) |
| Public availability of Kegel and ActiveNet prior art | Kegel/ActiveNet not publicly available before critical date | Defendants presented evidence creating disputes of fact about public posting/release dates | Genuine disputes of material fact exist; plaintiff's SJ denied as to these references |
| Whether Activision "makes" the accused networks ('344/'966) by distributing/compiling software | Activision makes the networks by compiling and owning/configuring software; players have no meaningful input | Following Centillion, customers' actions (installing, executing, selecting multiplayer) are required to form the claimed network; supplying software alone is insufficient | Activision does not "make" the networks; SJ for Defs as to non-infringement of '344 and '966 (limited to CoD and Destiny) |
| Whether Activision "uses" or "sells" the accused networks or hardware ('344/'966/'497) | Activision uses/benefits from the system (control, testing, ownership) and sells networks via software | Supplying software or updates and corporate testing does not "put into service" the full claimed system nor sell the physical components; no specific evidence of infringing testing; hardware components not sold by Activision | Activision does not "use" or "sell" the claimed systems/hardware for the accused games; SJ for Defs on non-infringement of '344, '966, and '497 (limited to CoD and Destiny) |
| Patent-eligibility of "computer readable medium" claims (claims of '147 and '634) | Claims effectively recite methods and so fall into statutory categories | Claims cover carrier signals/carrier waves and thus include non-statutory subject matter beyond §101 categories | Claims covering carrier waves are patent-ineligible; SJ for Defs as to those claims (invalid under §101) |
| Expert exclusion: Catharine Lawton (plaintiff's Daubert motion) | Lawton's royalty opinions rest on speculative adjustments and incomparable licenses | Activision defends reliance and methodologies as supported and subject to cross-examination | Motion to exclude Lawton denied (except court previously addressed some hypothetical-date analyses) |
| Expert exclusion: Dr. Meyer/Dr. Bims damages opinions (Activision's Daubert) | Plaintiff relies on Uniloc jury verdict and Boeing/Sony license comparability; used improper hypothetical date and comparisons | Defendants attack comparability, use of jury verdict, and apportionment; challenge reliance on Uniloc verdict and date selection | Court excluded Meyer to the extent she relied on the Uniloc jury verdict and excluded opinions that Boeing/Sony license does not cover accused products; also excluded Meyer's testimony using improper hypothetical-negotiation date; otherwise limited exclusions and allowed supplementation |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (Sup. Ct. 1986) (summary judgment burden and standards)
- Anderson v. Liberty Lobby, 477 U.S. 242 (Sup. Ct. 1986) (genuine dispute and materiality standard for summary judgment)
- Daubert v. Merrell Dow Pharm., 509 U.S. 579 (Sup. Ct. 1993) (district court gatekeeping for expert testimony under Rule 702)
- Centillion Data Sys., LLC v. Qwest Commc'ns Int'l Inc., 631 F.3d 1279 (Fed. Cir. 2011) (system-claim infringement requires combining all claim elements; supplying software insufficient to "make")
- In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (claims covering signals/carrier waves are non-statutory)
- Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275 (Fed. Cir. 2017) (invalidating claims covering carrier signals)
- CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (substance-over-form in analyzing computer-readable-medium claims)
- LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51 (Fed. Cir. 2012) (hypothetical negotiation date is date infringement began)
- Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325 (Fed. Cir. 2008) (need for specific evidence that defendant tested accused products in an infringing way)