Internet Machines LLC v. Alienware Corporation, Not Reported in F.Supp.2d (2013)
`2013 WL 4056282
`
`2013 WL 4056282
`Only the Westlaw citation is currently available.
`United States District Court,
`E.D. Texas, Tyler Division.
`
`Internet Machines LLC
`v.
`Alienware Corporation, et al.
`
`Case No. 6:10–cv–23 | June 19, 2013
`
`Attorneys and Law Firms
`
`John J. Edmonds, Henry Mark Pogorzelski, Johnathan K.
`Yazdani, Joshua Brooks Long, Michael James Collins,
`Stephen F. Schlather, Collins Edmonds Pogorzelski Schlather
`& Tower, PLLC, Houston, TX, Andrew W. Spangler,
`Spangler & Fussell P.C., Charles Van Cleef, Charles Van
`Cleef, Attorney at Law, PC, Longview, TX, James A. Fussell,
`III, Spangler & Fussell PC, Alexandria, VA, for Plaintiff.
`
`Jay Forrest Utley, Brian Charles McCormack, John G.
`Flaim, Kimberly Fahrenbrook Rich, Terry Afif Saad, Weldon
`Barton Rankin, Baker & McKenzie, Dallas, TX, Barry L.
`Kelmachter, Bachman & LaPointe PC, New Haven, CT, Earl
`Glenn Thames, Jr., John Frederick Bufe, Potter Minton, a
`Professional Corporation, Tyler, TX, Kevin Michael O'Brien,
`Baker & McKenzie LLP, Washington, DC, for Defendants.
`
`# Defendant PLX Technology, Inc.'s Renewed Motion for
`Judgment as a Matter of Law of No Willful Infringement
`(Doc. No. 542) is GRANTED;
`
`# Defendants' Renewed Motion for Judgment as a Matter of
`Law of Non–Infringement (Doc. No. 543) is DENIED;
`
`# Defendants' Motion for New Trial Based on Jury
`Tampering (Doc. No. 544) is DENIED;
`
`# Defendants' Motion for New Trial Under O2 Micro (Doc.
`No. 545) is DENIED;
`
`# Defendants' Motion for Remittitur or, alternatively, New
`Trial on Damages (Doc. No. 546) is DENIED;
`
`# Plaintiff's Motion for Entry of Judgment (Doc. No. 547)
`is GRANTED IN PART;
`
`# Plaintiff's Motion for Pre and Post–Judgment Interest
`(Doc. No. 548) is GRANTED;
`
`# Plaintiff's Motion for an Exceptional Case Finding, for
`an Award of Attorneys' Fees and Expert Costs, and for
`Enhanced Damages (Doc. No. 549) is DENIED;
`
`# Plaintiff's Motion for an Award of Post–Verdict Royalties
`(Doc. No. 550) is GRANTED IN PART; and
`
`# Plaintiff's Amended Motion for Award of Costs (Doc.
`No. 556) is GRANTED.
`
`MEMORANDUM OPINION AND ORDER
`
`MICHAEL H. SCHNEIDER, UNITED STATES DISTRICT
`JUDGE
`
`*1 Before the Court are the parties' post-trial motions. For
`the reasons stated below, the Court makes the following
`rulings on the parties' pending motions: 1
`
`# Defendants' Renewed Motion for Judgment as a Matter
`of Law on Damages (Doc. No. 539) is DENIED;
`
`# Defendants' Renewed Motion for Judgment as a Matter
`of Law of Invalidity (Doc. No. 540) is DENIED;
`
`# Defendants' Renewed Motion for Judgment as a Matter
`of Law of No Induced Infringement (Doc. No. 541) is
`DENIED;
`
`I. BACKGROUND
`On February 2, 2010, Plaintiff Internet Machines LLC filed
`this action, alleging, among other things, that Defendants
`infringed U.S. Patent Nos. 7,454,522 and 7,421,532.
`In particular, Internet Machines accused Defendant PLX
`Technology, Inc.'s PCI Express switches of infringing these
`patents. In response, Defendants contended that the patents
`were invalid.
`
`On February 29, 2012, following a six-day trial, the jury
`returned a verdict finding that Defendants infringed all
`of the asserted claims. The jury additionally found that
`PLX's infringement was willful. Furthermore, the jury did
`not find any of the asserted claims invalid. Accordingly,
`the jury awarded Internet Machines damages totaling
`$1,018,529.00. 2
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
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`1
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`RIC 1014
`IPR2014-00538
`USP 8,488,173
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`Internet Machines LLC v. Alienware Corporation, Not Reported in F.Supp.2d (2013)
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`II. LEGAL STANDARD
`*2 A motion for judgment as a matter of law is a procedural
`issue not unique to patent law; therefore, the motion is
`reviewed under the law of the regional circuit. Summit Tech.,
`Inc. v. Nidek Co., Ltd., 363 F.3d 1219, 1223 (Fed.Cir.2004).
`Judgment as a matter of law is justified where “a party
`has been fully heard on an issue during a jury trial and
`the court finds that a reasonable jury would not have a
`legally sufficient evidentiary basis to find for the party on
`that issue.” Fed.R.Civ.P. 50(a)(1). In addressing a motion for
`judgment as a matter of law, the Court must “review all of
`the evidence in the record, draw all reasonable inferences in
`favor of the nonmoving party, and may not make credibility
`determinations or weigh the evidence.” Ellis v. Weasler
`Eng'g Inc., 258 F.3d 326, 337 (5th Cir.2001) (citing Reeves
`v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150
`(2000)). The basis for this perspective is that “[c]redibility
`determinations, the weighing of the evidence, and the drawing
`of legitimate inferences from the facts are jury functions, not
`those of a judge.” Anderson v. Liberty Lobby, Inc., 477 U.S.
`242, 255 (1986); see alsoReeves, 530 U.S. at 150.
`
`Thus, a motion for judgment as a matter of law should
`be granted “only when ‘the facts and inferences point so
`strongly in favor of the movant that a rational jury could not
`reach a contrary verdict.’ ” Allstate Ins. Co. v. Receivable
`Fin. Co., L.L.C., 501 F.3d 398, 405 (5th Cir.2007) (quoting
`Pineda v. United Parcel Serv., Inc., 360 F.3d 483, 486 (5th
`Cir.2004)). The court affords “great deference to a jury's
`verdict” and a judgment as a matter of law is only appropriate
`“when viewing the evidence in the light most favorable to the
`verdict, the evidence points so strongly and overwhelmingly
`in favor of one party that the court believes that reasonable
`jurors could not arrive at any contrary conclusion.” Dresser–
`Rand Co. v. Virtual Automation Inc., 361 F.3d 831, 838 (5th
`Cir.2004).
`
`In regard to granting a new trial, the Court, in its discretion,
`may grant a new trial after a jury trial “for any reason for
`which a new trial has heretofore been granted in an action
`at law in federal court.” Fed.R.Civ.P. 59(a)(1)(A). As with
`motions for judgment as a matter of law, motions for new trial
`are determined by the law of the regional circuit. z4 Techs.,
`Inc. v. Microsoft Corp., 507 F.3d 1340, 1347 (Fed.Cir.2007).
`Grounds for a new trial include that “the verdict is against the
`weight of the evidence, the damages awarded are excessive,
`the trial was unfair, or prejudicial error was committed in
`its course.” Smith v. Transworld Drilling Co., 773 F.2d
`610, 613 (5th Cir.1985). The Court must affirm the jury's
`
`verdict unless, in viewing the evidence in the light most
`favorable to the verdict, the evidence points so strongly and
`overwhelmingly in favor of the other party that reasonable
`individuals could not arrive at a contrary conclusion. Pryor v.
`Trane Co., 138 F.3d 1024, 1026 (5th Cir.1998) (per curiam).
`
`III. DISCUSSION
`
`A. Defendants' Renewed Motion for Judgment as a Matter
`of Law of Non–Infringement (Doc. No. 543)
`This motion is DENIED.
`
`Defendants argue that Internet Machines provided no
`evidence of direct infringement at trial and, therefore,
`judgment as a matter of law is justified.
`
`“To prove infringement, a plaintiff must prove the presence
`of each and every claim element or its equivalent in the
`accused method or device.” Star Scientific, Inc. v. R.J.
`Reynolds Tobacco Co., 655 F.3d 1364, 1378 (Fed.Cir.2011).
`Infringement is a two-step test. The first prong requires that
`“the claim must be properly construed to determine its scope
`and meaning.” Carroll Touch, Inc. v. Electro Mech. Sys.,
`Inc., 15 F.3d 1573, 1576 (Fed.Cir.1993). Next, “the claim as
`properly construed must be compared to the accused device
`or process.” Id. Since infringement is a fact question, it is
`reviewed for substantial evidence. Star, 655 F.3d at 1378.
`
`*3 First, Defendants maintain that Internet Machines
`repeatedly misapplied the Court's claim construction during
`trial. According to Defendants, Internet Machines explained
`that a “non-transparent port” is a port “for interfacing
`to devices ... with non-shared address domains” rather
`than adhering to the Court's defined construction of
`“port(s) associated with a non-shared address domain (or
`domains)” (Afternoon Trial Tr. 147:22–23, Feb. 22, 2012,
`Doc. No. 515). Defendants argue that the Court's construction
`requires the presence of physical ports while Internet
`Machine's application only requires the capability of having
`physical ports in the future. Defendants conclude there is
`no basis for the jury's infringement finding because Internet
`Machines failed to establish that any accused product includes
`a switch with at least one non-transparent port associated with
`a non-shared address domain.
`
`Defendants point out that at several points in the trial, Internet
`Machines used the “interfacing” terminology in explaining
`non-transparent ports. But Internet Machines presented this
`evidence to explain the function of a port. Internet Machines
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`Internet Machines LLC v. Alienware Corporation, Not Reported in F.Supp.2d (2013)
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`also separately addressed whether the accused switches
`included a non-transparent port associated with a non-shared
`address domain. Internet Machines' technical expert Charles
`Narad provided detailed testimony connecting the Court's
`construction and all claim limitations to the accused products.
`
`Defendants also argue that Internet Machines failed to prove
`that the accused switches included both transparent and
`non-transparent ports. Yet, Mr. Narad provided testimony
`in direct contradiction to this argument. For example,
`Mr. Narad explained how the data books containing the
`switches' technical specifications supported his analysis that
`the accused products contained at a minimum two transparent
`ports and one non-transparent port. Mr. Narad also relied
`upon information provided by PLX engineers, including
`Vijay Meduri, for his conclusions that the switches contained
`all elements of the claims, including the required ports, at the
`time of manufacture.
`
`Defendants additionally assert that the accused switches
`require configuration in order to be infringing. According to
`Defendants, the switches only have transparent ports when
`they are shipped or sold. Because all asserted claims require
`at least two transparent ports and one non-transparent port,
`Defendants conclude there can be no infringement. Internet
`Machines responds that it presented substantial evidence that
`the switches contained all elements of the asserted claims.
`
`At trial, Mr. Narad testified that all of the logic and
`structures for transparency and non-transparency—including
`the necessary registers—exist at each port of the accused
`switches at the time of manufacture. Mr. Narad presented
`evidence that the registers exist on the switches from their
`inception. Mr. Narad explained that the exposure of a subset
`of the registers at the ports determines their transparency.
`Thus, Mr. Narad concluded the accused switches require no
`configuration for infringement in part because the registers
`are always present on the switches.
`
`jury's
`the
`supports
`substantial evidence
`Ultimately,
`infringement finding. The jury was free to consider all
`of the evidence and reject Defendants' non-infringement
`theory in favor of Internet Machines' infringement evidence.
`Internet Machines provided substantial evidence that the
`accused products, in light of the Court's claim construction,
`infringe without any additional configuration. Because the
`jury's infringement finding is supported by substantial
`evidence, judgment as a matter of law of non-infringement is
`unwarranted.
`
`B. Defendants' Renewed Motion for Judgment as a Matter
`of Law of No Induced Infringement (Doc. No. 541)
`This motion is DENIED.
`
`Defendants allege that Internet Machines did not carry its
`burden at trial for its induced infringement claim. Because
`infringement is a factual determination, a jury's finding is
`reviewed for substantial evidence. SeeLucent Techs., Inc. v.
`Gateway, Inc., 580 F.3d 1301, 1309 (Fed.Cir.2009).
`
`*4 As set forth in the Patent Act, “[w]hoever actively
`induces infringement of a patent shall be liable as an
`infringer.” 35 U.S.C. § 271(b). “In order to prevail on an
`inducement claim, the patentee must establish ‘first that there
`has been direct infringement, and second that the alleged
`infringer knowingly induced infringement and possessed
`specific intent to encourage another's infringement.’ ” ACCO
`Brands, Inc. v. ABA Locks Mfr. Co., Ltd., 501 F.3d 1307,
`1312 (Fed.Cir.2007) (quoting Minn. Mining & Mfg. Co. v.
`Chemque, Inc., 303 F.3d 1294, 1304–05 (Fed.Cir.2002)).
`
`infringer
`is satisfied where an
`intent element
`The
`had “knowledge that the induced acts constitute patent
`infringement” or was willfully blind to any infringement.
`Global–Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060,
`2068–69 (2011). Intent can be proved by either direct or
`circumstantial evidence. SeeFuji Photo Film Co., Ltd. v.
`Jazz Photo Corp., 394 F.3d 1368, 1377 (Fed.Cir.2005).
`Importantly, “[i]ntent is a factual determination particularly
`within the province of the trier of fact.” Allen Organ Co. v.
`Kimball Int'l, Inc., 839 F.2d 1556, 1567 (Fed.Cir.1988).
`
`Here, substantial evidence supports the jury's verdict
`of induced infringement as to all Defendants. Internet
`Machines provided considerable evidence in support of direct
`infringement. Furthermore, Defendants had actual notice of
`the patents at least as early of the filing of this suit. Internet
`Machines presented sales data establishing that Defendants
`continued to sell the accused products to their customers
`through the time of trial. As a minimum, Defendants had
`knowledge of the asserted patents when they engaged in the
`post-filing sales. This is substantial evidence of inducement.
`
`Internet Machines showed that Defendants encouraged the
`configuration and use of the infringing feature. Internet
`Machines provided evidence that the patented feature drove
`sales. According to Internet Machines, the patented feature
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`Internet Machines LLC v. Alienware Corporation, Not Reported in F.Supp.2d (2013)
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`was essential to the accused products. Internet Machines also
`established that Defendants advertised the patented feature
`and provided customer support for its operation. SeeMetro–
`Goldwyn–Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913,
`936 (2005) (“Evidence of ‘active steps ... taken to encourage
`direct infringement,’ such as advertising an infringing use
`or instructing how to engage in an infringing use, show
`an affirmative intent that the product be used to infringe,
`and a showing that infringement was encouraged overcomes
`the law's reluctance to find liability when a defendant
`merely sells a commercial product suitable for some lawful
`use ....”) (quoting Oak Indus., Inc. v. ZenithElecs. Corp.,
`697 F.Supp. 988, 992 (N.D.Ill.1988); Metabolite Labs.,
`Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1365
`(Fed.Cir.2004); VirnetX Inc. v. Apple Inc., No. 6:10–cv–417,
`2013 WL 692652, at *9 (E.D.Tex. Feb. 26, 2013) (upholding
`jury's inducement finding because the defendant instructed
`its customers to use the accused features in an infringing
`manner); Advanceme Inc. v. RapidPay, LLC, 509 F.Supp.2d
`593, 627 (E.D.Tex.2007). Based upon all of the facts and
`evidence, the jury could reasonably infer the requisite intent
`for inducement.
`
`In light of the evidence presented at trial, a reasonable
`jury could find that Defendants induced their customers to
`infringe. The Court will not disturb the jury's findings on this
`issue because it is supported by substantial evidence.
`
`C. Defendant PLX Technology, Inc.'s Renewed Motion for
`Judgment as a Matter of Law of No Willful Infringement
`(Doc. No. 542)
`*5 This motion is GRANTED.
`
`PLX challenges the jury's finding of willful infringement.
`Specifically, PLX contends that Internet Machines did not
`present clear and convincing evidence that PLX willfully
`infringed the asserted patents.
`
`Willful infringement requires a two-part test. First, “a
`patentee must show by clear and convincing evidence that
`the infringer acted despite an objectively high likelihood
`that its actions constituted infringement of a valid patent.”
`In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed.
`Cir.2007) (en banc). “The state of mind of the accused
`infringer is not relevant to this objective inquiry.” Id.
`Second, “[i]f this threshold objective standard is satisfied,
`the patentee must also demonstrate that this objectively-
`defined risk (determined by the record developed in the
`
`infringement proceeding) was either known or so obvious that
`it should have been known to the accused infringer.” Id. The
`jury's determination of the subjective prong is reviewed for
`substantial evidence. Bard Peripheral Vascular, Inc. v. W.L.
`Gore & Assocs., Inc., 682 F.3d 1003, 1008 (Fed.Cir.2012).
`
`Since the time of trial in this case, the Federal Circuit
`has clarified that the first prong—the objective prong—
`is determined as a matter of law. Id. (“[T]he ultimate
`legal question of whether a reasonable person would have
`considered there to be a high likelihood of infringement of
`a valid patent should always be decided as a matter of law
`by the judge.”). “Based on the record ultimately made in
`the infringement proceedings,” the Court should determine “
`‘whether a reasonable litigant could realistically expect’ those
`defenses to succeed.” Id. (quotations omitted).
`
`In this case, the Court finds neither prong of the willfulness
`test satisfied.
`
`1. Willful Infringement—Objective Prong
`PLX argues that Internet Machines failed to present any
`evidence that PLX acted despite an objectively high
`likelihood that its actions amounted to infringement of a valid
`patent. The Court agrees.
`
`In considering the fully developed record, the Court does
`not find the objective prong of the willfulness test satisfied.
`Based on the record developed during trial, PLX could have
`realistically expected its non-infringement and invalidity
`defenses to succeed.
`
`Internet Machines argues that PLX's non-infringement
`position is not objectively reasonable as a matter of law.
`Internet Machines maintains that PLX's non-infringement
`theory was clearly deficient because Defendants' technical
`expert Dr. Martin Kaliski did not review any technical
`documents, and therefore, had no technical basis for his non-
`infringement opinions. Although Internet Machines attacks
`the foundation for PLX's position, this has no impact on
`the reasonableness of PLX's non-infringement argument.
`PLX argued that its switches required configuration to be
`infringing. The Court does not find this to be an unreasonable
`position.
`
`Internet Machines additionally contends that PLX's invalidity
`defense is objectively unreasonable as a matter of law.
`According to Internet Machines, PLX's anticipation argument
`and PLX's prior invention theories were objectively meritless.
`
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`*6 Regarding anticipation, the patent examiner initially
`rejected the claims in light of PLX's webcast. To predate
`the webcast, Internet Machines filed an inventor declaration
`and supporting documentation. At trial, PLX challenged
`the adequacy of the inventor's declaration to predate the
`webcast. PLX even introduced evidence that the patent
`examiner did not adequately review the declaration. PLX also
`attacked the provisional application as insufficient for priority
`purposes because it lacked an adequate disclosure of the later-
`claimed invention. Although PLX's anticipation arguments
`were ultimately unavailing, they were objectively reasonable.
`
`Pertaining to prior invention, PLX argued that it first
`conceived of the invention and diligently reduced the
`invention to practice. Accordingly, PLX concluded the
`patents were invalid under 35 U.S.C. § 102(g). Internet
`Machines responds that PLX's prior invention claim is
`untenable. Yet during trial, Internet Machines' technical
`expert Mr. Narad testified that PLX's Chief Scientist Jack
`Regula first conceived the claimed invention. Although
`Internet Machines challenges the context of Mr. Narad's
`testimony, it created an objectively reasonable basis for PLX's
`invalidity argument.
`
`Internet Machines also refutes PLX's diligent reduction to
`practice argument as objectively unreasonable. However,
`PLX corroborated diligence with engineering presentations,
`internal emails, press releases, and the webcast. Because
`PLX did not produce voluminous amounts of supporting
`technical documents, Internet Machines discredits PLX's
`reasonable expectation of success of this theory. Even though
`Internet Machines takes issue with the types of corroborating
`evidence produced by PLX, PLX produced credible evidence
`to support its diligence in reducing the invention to practice.
`
`in good faith credible
`On balance, PLX presented
`and objectively reasonable noninfringement and invalidity
`arguments. As a matter of law, there was not an objectively
`high likelihood that PLX's actions constituted infringement
`of a valid patent. SeePowell v. Home Depot U.S.A.,
`Inc., 663 F.3d 1221, 1236 (Fed.Cir.2011) (“ ‘[W]here
`an accused infringer relies on a reasonable defense to a
`charge of infringement,’ the objective prong tends not to be
`met.”(quoting Spine Solutions, Inc. v. Medtronic Sofamor
`Danek USA, Inc., 620 F.3d 1305,1319 (Fed.Cir.2010)).
`Internet Machines has not proven by clear and convincing
`evidence the threshold objective prong of Seagate.
`
`2. Willful Infringement—Subjective Prong
`Furthermore, the record contains insufficient evidence to
`support the jury's subjective willfulness finding. Bard, 682
`F.3d at 1008 (“If, in view of the facts, the asserted defenses
`were not reasonable, only then can the jury's subjective
`willfulness finding be reviewed for substantial evidence.”).
`Under the subjective prong, Internet Machines needed to
`establish by clear and convincing evidence that PLX knew
`or should have known of the risk that its conduct infringed
`Internet Machines' patents. SeeSeagate, 497 F.3d at 1371. The
`Court applies a subjective evidence standard of review. Bard,
`682 F.3d at 1008.
`
`The parties differentiate between pre-filing and post-filing
`conduct. The Court finds that the record as a whole is
`insufficient to establish the subjective prong as to pre-filing
`conduct. 3
`
`At trial, Internet Machines presented no evidence that prior
`to filing of this action, PLX knew or should have known that
`its actions constituted infringement. Frank Knuettel, one of
`the owners of Internet Machines, testified that his company
`never contacted Defendants regarding any infringement prior
`to initiating this suit. Internet Machines does not contest this
`point. No evidence supports the claim that PLX had any
`knowledge from any other source that the patents existed. 4
`This is not a case where PLX copied the technology from
`another or disregarded information that another owned the
`technology. SeeDePuy Spine, Inc. v. Medtronic Sofamor
`Danek, Inc., 567 F.3d 1314, 1336 (Fed.Cir.2009) (explaining
`that “evidence of copying in a case of direct infringement is
`relevant only to Seagate's second prong, as it may show what
`the accused infringer knew or should have known about the
`likelihood of its infringement”).
`
`*7 Lastly, Internet Machines argues that PLX attempted to
`conceal its knowledge of downstream use and configuration
`by its customers. Even if true, knowledge of downstream use
`alone is not equivalent to knowledge that the downstream use
`is infringing. Internet Machines provided no evidence to show
`that PLX knew or should have known that the downstream
`use was infringing conduct.
`
`Internet Machines failed to present any evidence, let alone
`substantial evidence, that PLX knew or should have that its
`pre-filing conduct amounted to infringement. In total, the
`jury's finding that PLX willfully infringed the asserted patents
`is unsupported. Accordingly, PLX's motion for judgment as
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`a matter of law of no willful infringement is meritorious and
`should be granted. The Court directs the entry of judgment as
`a matter of law that PLX did not willfully infringe either the
`#552 or #532 patents.
`
`D. Defendants' Renewed Motion for Judgment as a Matter
`of Law of Invalidity (Doc. No. 540)
`This motion is DENIED.
`
`Defendants present several invalidity theories, including
`prior invention, inadequate disclosure, inadequate inventor
`declaration under 37 C.F.R. 1.131, and obviousness. The
`Court disagrees with Defendants' arguments and addresses
`each in turn.
`
`1. Prior Invention
`Defendants' first argue that PLX is a prior inventor of the
`asserted technology under 35 U.S.C. § 102(g)(2). Under
`§ 102(g)(2), PLX must show by clear and convincing
`evidence its prior invention by establishing that “(1) it
`reduced its invention to practice first ... or (2) it was the
`first party to conceive of the invention and then exercised
`reasonable diligence in reducing that invention to practice.”
`Mycogen Plant Sci. v. Monsanto Co., 243 F.3d 1316, 1332
`(Fed.Cir.2001). “[T]he test for conception is whether the
`inventor had an idea what was definite and permanent
`enough that one skilled in the art could understand the
`invention....” Burroughs Wellcome Co. v. Barr Labs., Inc.,
`40 F.3d 1223, 1228 (Fed.Cir.1994). “In order to establish
`reduction to practice, the prior inventor must have (1)
`constructed an embodiment or performed a process that
`met all the claim limitations and (2) determined that the
`invention would work for its intended purpose.” Leva Pharm.
`Indus. Ltd. v. AstraZeneca Pharm. LP, 661 F.3d 1378, 1383
`(Fed.Cir.2011).
`
`The parties dispute whether PLX's Chief Scientist Jack
`Regula first conceived of the claimed invention. The parties
`further dispute whether PLX engineers diligently reduced the
`invention to practice after Mr. Regula's alleged conception.
`
`PLX argues that at trial it presented uncontroverted evidence
`regarding its prior invention. Specifically, Mr. Regula
`testified and presented evidence of his conception of the
`invention by at least April 21, 2003. PLX further notes
`that Internet Machines' technical expert Mr. Narad agreed
`that PLX first conceived the invention. Additionally, PLX
`employees Mr. Meduri and Larry Chisvin testified that Mr.
`
`Regula and at least 30 PLX engineers worked continuously
`and diligently and reduced the invention to practice by
`March 2004. PLX states that it presented a number of
`documents at trial in support of its position. SeeSandt Tech.,
`Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350
`(Fed.Cir.2001) (explaining that it is well-established law
`that a claim of prior inventorship must be supported by
`corroborating evidence). According to PLX, the documents
`include engineering presentations, white papers, webcasts,
`and press releases. Because Internet Machines claims an
`invention date of August 25, 2003, or at the latest by the filing
`of the provisional application on November 18, 2003, PLX
`concludes it was the first to invent.
`
`*8 Regarding diligence, Mr. Meduri admitted during trial
`to a several month delay in the development process.
`SeeCreative Compounds, LLC v. Starmark Labs., 651 F.3d
`1303, 1312–13 (Fed.Cir.2011) (“Merely asserting diligence
`is not enough; a party must ‘account for the entire
`period during which diligence is required.’ ” (quoting
`Gould v. Schawlow, 363 F.2d 908, 919 (C.C.P.A.1966))).
`Furthermore, Mr. Meduri testified that diligence in reducing
`the invention to practice would have generated a mass of
`engineering documents, including architecture specifications
`and microarchitecture specifications. But Mr. Meduri
`confirmed that none of these documents were brought to trial.
`SeeKridl v. McCormick, 105 F.3d 1446, 1450 (Fed.Cir.1997)
`(reasoning that the purpose behind requiring corroborating
`evidence “is to prevent fraud, by providing independent
`confirmation of the inventor's testimony”). Importantly,
`Internet Machines elicited testimony discrediting PLX's
`remaining documents establishing diligence.
`
`Upon a review of the entirety of the record, the Court finds
`that substantial evidence supports the jury's finding that PLX
`was not the first to invent as defined by § 102(g). Reasonable
`and impartial minds could have reached such a verdict.
`SeeArgo v. Woods, 399 F. App'x 1, 3 (5th Cir.2010) (per
`curiam) (explaining that the standard for determining a “Rule
`50(b) motion for judgment as a matter of law following
`a jury verdict is whether ‘the state of proof is such that
`reasonable and impartial minds could reach the conclusion the
`jury expressed in its verdict’ ” (quoting Am. Home Assurance
`Co. v. United Space Alliance, LLC, 378 F.3d 482, 487 (5th
`Cir.2004))). The Court will not disturb the jury's verdict on
`this issue because it is supported by substantial evidence.
`
`2. Inadequate Disclosure
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
`

`

`Internet Machines LLC v. Alienware Corporation, Not Reported in F.Supp.2d (2013)
`2013 WL 4056282
`
`the November 18, 2003
`that
`Defendants also argue
`provisional application is inadequate to support a valid
`claim of priority for the asserted patents. Specifically,
`Defendants contend the provisional application lacks an
`adequate written description, requires a drawing, and is not
`enabling. Defendants reason that without a claim of priority
`to the provisional application, the constructive reduction
`to practice occurred on November 18, 2004. Therefore,
`Defendants believe the asserted patents are anticipated by
`prior invention and prior printed publication. Specifically, the
`patents are anticipated by PLX's prior invention and PLX's
`August 26, 2003 webcast.
`
`The written description requirement under 25 U.S.C. § 112
`requires that a patent “must clearly allow persons of ordinary
`skill in the art to recognize that [the inventor] invented what is
`claimed.” In re Gosteli, 872 F.2d 1008, 1012 (Fed.Cir.1989);
`Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
`(Fed.Cir.2010) (en banc). Therefore, “the test for sufficiency
`is whether the disclosure of the application relied upon
`reasonably conveys to those skilled in the art that the inventor
`had possession of the claimed subject matter as of the
`filing date.” Ariad, 598 F.3d at 1351. “[T]he level of detail
`required to satisfy the written description requirement varies
`depending on the nature and scope of the claims and on the
`complexity and predictability of the relevant technology.” Id.
`
`application
`the provisional
`that
`allege
`Defendants
`inadequately discloses the claimed invention. Defendants
`claim that the disclosure in the provisional application
`does not adequately demonstrate possession of the claimed
`invention. To the contrary, Internet Machines' technical
`expert Mr. Narad provided extensive testimony detailing how
`the provisional application supports each asserted claim. Mr.
`Narad mapped the claim language directly to the provisional
`application. Accordingly, Internet Machines provided ample
`evidence and testimony at trial that the written description
`of the provisional application reasonably conveyed to those
`skilled in the art that Internet Machines had possession of
`the claimed invention. Thus, substantial evidence supports the
`jury's verdict on this issue.
`
`*9 The requirement for drawings under 35 U.S.C. § 113
`states that an “applicant shall furnish a drawing where
`necessary for the understanding of the subject matter
`sought to be patented.” Defendants contend the provisional
`application is insufficient as a matter of law because
`the inventors failed to include any drawings. Defendants'
`technical expert Dr. Kaliski testified that a person of
`
`ordinary skill in the art would require drawings to understand
`the claimed invention. Because the provisional application
`lacked a drawing, Defendants believe it is insufficient as a
`matter of law to support a claim of priority.
`
`The law only requires a drawing “where necessary.” 35
`U.S.C. § 113. The lack of a drawing does not automatically
`defeat an application. Mr. Narad contradicted Dr. Kaliski's
`testimony and explained at trial that an ordinary person of
`skill in the art would understand the invention without a
`drawing. A reasonable jury was free to weigh the substantial
`evidence provided by Internet Machines and find that
`drawings were not necessary as part of the provisional
`application.
`
`Defendants additionally argue that the provisional application
`is inadequate for claiming priority because it does not enable
`one of ordinary skill in the art to practice the claimed
`invention. Enablement under 35 U.S.C. § 112 req