United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
GILSTHAP UNITED STATES DISTRICT JUDGE
the Court is Plaintiff Intellectual Ventures II LLC's
(“IV” or “Plaintiff”) Motion for
Judgment as a Matter of Law Under Rule 50(b) (Dkt. No. 561)
(“the Motion”). Having considered the Motion, and
for the reasons set forth below, the Court finds that the
Motion should be and hereby is DENIED.
August 31, 2016, IV filed suit against Defendants FedEx
Corporation, Federal Express Corporation, FedEx Ground
Package System, Inc., FedEx Freight, Inc., FedEx Custom
Critical, Inc., FedEx Office and Print Services, Inc., and
GENCO Distribution System, Inc. (collectively,
“FedEx” or “Defendants”), alleging
infringement of United States Patent Nos. 6, 909, 356
(“the '356 Patent”), 7, 199, 715 (“the
'715 Patent”), 8, 494, 581 (“the '581
Patent”), and 9, 047, 586 (“the '586
Patent”) (collectively, the
“Patents-in-Suit” or “Asserted
Patents”). (Dkt. No. 1 ¶¶ 1-13.)
Court held a jury trial between May 14, 2018 and May 18,
2018, whereupon the jury returned a verdict finding each
Asserted Claim of each Asserted Patent to be not infringed,
that each Asserted Claim of the '581, '586, and
'356 Patents were invalid, and that each Asserted Claim
of the '715 Patent was not invalid. Following the
verdict, the Court entered Final Judgment on May 21, 2018 in
accordance with the verdict.
Renewed Motion for Judgment as a Matter of Law
motion for judgment as a matter of law [under Rule 50(b)] is
a challenge to the legal sufficiency of the evidence
supporting the jury's verdict.”
Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co., 276
F.Supp.3d 629, 643 (E.D. Tex. 2017) (“UroPep”)
(Bryson, J., sitting by designation). Entry of judgment as a
matter of law is therefore only appropriate when “there
is no legally sufficient evidentiary basis for a reasonable
jury to find as the jury did.” Guile v. United States,
422 F.3d 221, 225 (5th Cir. 2005); see also Baisden v.
I'm Ready Prods., Inc., 693 F.3d 491, 498 (5th Cir. 2012)
(“A district court must deny a motion for judgment as a
matter of law unless the facts and inferences point so
strongly and overwhelmingly in the movant's favor that
reasonable jurors could not reach a contrary
conclusion.”) (emphasis added) (internal quotation
evaluating a motion for judgment as a matter of law, a court
must ‘draw all reasonable inferences in the light most
favorable to the verdict.'” Metaswitch Networks
Ltd. v. Genband U.S. LLC, No. 2:14-CV-00744-JRG, 2017 WL
3704760, at *2 (E.D. Tex. Aug. 28, 2017) (quoting E.E.O.C. v.
Boh Bros. Const. Co., L.L.C., 731 F.3d 444, 451 (5th Cir.
2013)). Courts must also avoid the temptation of revisiting
credibility determinations or reweighing evidence.
Id. Such determinations are, appropriately, left to
the jury. Montano v. Orange Cty., Texas, 842 F.3d 865, 874
(5th Cir. 2016) (“[I]t is for the jury alone to judge
the credibility of witnesses and weigh the evidence.”).
prove infringement under 35 U.S.C. § 271, a plaintiff
must show the presence of every element, or its equivalent,
in the accused product or service. Lemelson v. United States,
752 F.2d 1538, 1551 (Fed. Cir. 1985). First, the claim must
be construed to determine its scope and meaning; and second,
the construed claim must be compared to the accused device or
service. Absolute Software, Inc. v. Stealth Signal, Inc., 659
F.3d 1121, 1129 (Fed. Cir. 2011) (citing Carroll Touch, Inc.
v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir.
1993)). “A determination of infringement is a question
of fact that is reviewed for substantial evidence when tried
to a jury.” ACCO Brands, Inc. v. ABA Locks Mfr. Co.,
501 F.3d 1307, 1311 (Fed. Cir. 2007).
is a matter of law based on underlying factual findings, and
is grounds for unpatentability when the claimed subject
matter is not identically described, if the subject matter as
a whole would have been obvious to a person having ordinary
skill in the field of the invention. 35 U.S.C. § 103(a);
see also KSR Int'l, Inc. v. Teleflex, Inc., 550 U.S. 398,
406-07 (2007). When obviousness is based on information from
a combination of sources, the question is whether a person of
ordinary skill in the field would have been motivated to
select and combine this information, and with a reasonable
expectation of achieving the desired result. See, e.g., Merck
& Cie v. Gnosis S.p.A., 808 F.3d 829, 833 (Fed. Cir.
Infringement of the '581 Patent
18 and 20 of the '581 Patent provide:
[a] means for establishing a two-way communication channel
between a server and at least one handheld device located at
a field geographically distant from the server;
[b] means for accessing a program stored at the server to
enable an assessment at the field using the at least one
[c] means for managing data collected at the field using the
at least one handheld device responsive to program;
[d] means for determining a geographic location of the at
least one handheld device; and
[e] means for enabling communicating the data collected at
the field and the geographic location of the at least one
handheld device between the at least one handheld device and
other devices or the server.
20. The apparatus of claim 18, further comprising means for
enabling updating field operation assignments for each of the
at least one handheld device.
Patent at 14:55-15:2, 15:5-7.
argues that it both presenting “abundant evidence that
the PowerPad and Star IV handheld devices made and operated
by and for Corp., Express, and Ground meet every limitation
of apparatus claims 18 and 20 of the '581 patent”
and that “none of the testimony [Defendants'
witnesses] provided in rebuttal overcame [Plaintiff's
expert's] infringement showing.” (Dkt. No. 561 at
Parties do not dispute that the Accused Products perform
claim elements [a], [c], [d], or the elements added by
dependent Claim 20. (See FedEx's Responsive Briefing,
Dkt. No. 572 at 4-11.) Accordingly, the Court confines its
analysis to Claim Elements [b] and [e].
Claim Element [b]: “Means for Accessing . .
Court construed “means for accessing a program stored
at the server to enable an assessment at the field using the
at least one handheld device” to be a
means-plus-function claim wherein the function is
“accessing a program that is stored at the server to
enable an assessment at the field using the at least one
handheld device, wherein accessing a program requires more
than accessing a database storing data” and the
corresponding structure is “a processor, along with a
user interface, RAM, ROM, configured to make a service
request to a server program, and a server program configured
to fulfill the request.” (Claim Construction Order,
Dkt. No. 165 at 83-86.)
argues that Dr. Sharony properly “identified the
Court's claim construction and explained how both the
Star IV and the PowerPad met the function of that limitation
as construed by the Court.” (Dkt. No. 561 at 14 (citing
May 14, 2018 Afternoon Session, Dkt. No. 541 at
155:21-156:23).) IV notes that Dr. Sharony explained how the
devices access a program at the server using his expertise
and certain FedEx documents. (Id.; see also
PTX-0213, PTX-0220, PTX-0499.)
responds that it “introduced substantial evidence that
the PowerPad and Star IV do not access a program at a
geographically distant server, ” because such devices
not only “do not access a remote program, ” but
were designed not to do so. (Dkt. No. 572 at 5 (citing May
16, 2018 Morning Session, Dkt. No. 546 at 110:16-116:11).)
Specifically, FedEx asserts that its experts opined that the
DWS and ROADS systems pushed data to other intermediary
systems on their own accord, rather than the PowerPad and
Star IV devices accessing DWS and ROADS directly.
(Id. at 5-6.)
replies that Dr. Sharony testified, and PTX-499 shows, that
“PowerPad accesses DWS-which the parties agree is a
‘program'-for sign-on.” (Dkt. No. 577 at 2.)
DWS then “sends a ‘response,' allowing the
PowerPad to ‘get in return manifests and updates,
'” and made similar assertions with regards to the
Star IV device. (Id. (citing May 14, 2018 Afternoon
Session, Dkt. No. 541 at 155:21-157:18).) IV further argues
that a reasonable jury could not have credited Mr.
Williams' testimony regarding the intermediary servers
because “[t]hose assertions contradicted [Defense's
expert] Mr. Smith's testimony that explained that those
‘intermediary servers' were actually just
‘pipes,' or ‘plumbing to move data
around,' and that ‘on the road,' DWS may
‘transmit updates' to the PowerPad.”
(Id. at 3 (citing May 16, 2018 Morning Session, Dkt.
No. 546 at 80:2-19, 83:11-14).)
sur-replies that PTX-213 and PTX-499 are irrelevant because
they merely show a “sign-on” request, and not
access that obtains the manifest. (Dkt. No. 580 at 2.)
Dr. Sharony testified that both the Star IV and the PowerPad
met the “accessing” limitation, he did so through
conclusory statements about PTX-213 and PTX-499,
respectively. For example, with regards to Claim 1, Dr.
Sharony used PTX-213 to illustrate that the Star IV accessed
the P&D login service, the pickup listing web service,
and the delivery manifest web service. (May 14, 2018
Afternoon Session, Dkt. No. 541 at 131:15-25; see also Dkt.
No. 541 at 132:3-10 (“So at the start of the day, the
handheld device, through the P&D login web service, has
to log into the system to - in order to get the pickup
listing and the delivery manifest. So once successfully
logged in, these two program [sic] will provide the handheld
device with the listing -- or the delivery listing, which we
call the manifest -- delivery manifest, and the pickup
listing or the pickup manifest.”).) Dr. Sharony
repeated his belief that accessing the P&D login, pickup
listing, and delivery manifest performed the “accessing
a program” claim element of Claim 18. (Id. at
155:20-25.) Similarly, Dr. Sharony testified that the
PowerPad performed the claim element by accessing the DWS
assessment program. (Id. at 157:12-17 (“Q.
Does the FedEx Express system perform accessing a program? A.
Yes, it does. Q. Okay, And how so? A. By sending this request
from the handheld to the DWS successful login, we get in
return manifest and updates.”).)
the Star IV, Mr. Williams testified that the extracted pickup
and delivery manifests are not themselves programs, as the
Court construed the term, because such manifests are
“data files” and the Court's construction
requires more than accessing a database holding data.
(Id. at 114:14-115:6.) IV does not address this
argument in its briefing and only appears to address
PowerPad's DWS system on cross-examination. (See
generally May 16, 2018 Afternoon Session, Dkt. No. 547 at
13:24-22:25.) Further, while IV asserts that Mr. Williams and
Mr. Smith admitted that DWS is a “program, ” such
admissions were made in the context of DWS being a
“software program, ” and not a
“program” as construed by the Court. (See
Id. at 13:24-14:22.)
Court finds that a reasonable jury could have determined that
the Star IV device did not perform the
“accessing” claim element of Claim 18.
Plaintiff's briefing does not contest that the accessed
manifests are data, nor that the “programs”
performing the accessing are doing more than merely accessing
a database. Further, while Plaintiff asserts that “Mr.
Williams did not opine on noninfringement for the
‘P&D Login web service, '” it has not
identified any program stored on the login server that
enables an assessment to take place.
the PowerPad, Mr. Williams took a slightly different tack and
testified that the manifests, listings, and updates were not
accessed by the handheld device, but instead were pushed to
the device from intermediate servers. For example, with
regards to the PowerPad, Mr. Williams testified:
Q. In your opinion, at this start of day, does the PowerPad
access a program stored on the DWS servers?
A. It does not.
Q. Can you explain to us what's shown in green at the
bottom of DTX-408?
A. Green is about communications that can take place once the
courier and the PowerPad device have -- have left the station
are -- and are out in the field and if communications is
necessary at that point.
The courier -- the bottom part of the green part is courier
outbound, which you heard described as being when there's
a -- an update to a pickup manifest that needs to take place,
and that is pushed out to JMSQ, which is the cylindrical
object. And then that, in turn, is pushed ...