Lead Case: 1:19-CV-977-ADA 6:21-CV-00299-ADA
ORDER GRANTING MOTION FOR SUMMARY JUDGMENT
Before the Court is Defendant Intel Corporations' Motion for Summary Judgment of No Pre-Complaint Damages Under 35 U.S.C. § 287 filed on October 8, 2020. ECF No. 258. Plaintiff VLSI Technology LLC filed a timely Response to the Motion on October 22, 2020. ECF No. 303. Intel filed a Reply on October 30, 2020. ECF No. 327. The Court has considered the Motion, oral arguments, all relevant filings, and the applicable law. For the reasons set forth below, the Court finds that Intel's motions should be GRANTED.
On March 1, 2019, VLSI filed a complaint against Intel in the District of Delaware asserting U.S. Patent Nos. 6,366,522 (the "'522 patent") and 6,633,187 (the "'187 patent"), and four other patents. Case No. 1:19-cv-00426 (D. Del.) ECF No. 1. On April 11, 2019, VLSI voluntarily dismissed the Delaware action and filed a complaint against Intel in the Western District of Texas, asserting the '522 and '187 patents. Case No. 6:19-cv-00255 (W.D. Tex.) ECF No. 1. In its Complaint, VLSI alleges that it is the current assignee of the '522 and '187 patents. Id.
Sigmatel was the original assignee of both the '522 and '187 patents. ECF No. 258 at 2. Sigmatel sold a family of products in the United States called "STMP35xx" (or "35XX"), which Sigmatel argued practiced the '522 and '187 patents in a proceeding before the ITC, Investigation No. 337-TA-538. Id. On March 20, 2006, an Administrative Law Judge of the ITC entered Final Initial and Recommended Determinations, finding that Sigmatel established that its 35XX product line satisfies the technical prong requirement of the domestic industry for the both the '187 and '522 patents. ECF No. 258-114 at 114, 121.
On July 17, 2020, in response to Intel's Interrogatory seeking VLSI's arguments related to marking, VLSI did not dispute that the 35XX chips practice the '522 and '187 patents. See ECF No. 258-105 [VLSI's July 17, 2020 Response to Interrogatory No. 18]. On July 21, 2020, VLSI's technical experts for the '522 and '187 patents served expert reports where both experts address issues related to marking, but neither offers any opinion disputing that the 35XX chips practice the '522 and '187 patents. See ECF No. 258-31 ¶ 130; ECF No. 258-27 p. 27 ¶ 87.
The Sigmatel 3550 chip, part of the 35XX line of chips, is not marked with any patent numbers. ECF No. 258-116 [Photograph of STMP 3550]. VLSI argues that Sigmatel reasonably gave public notice of its patents through means other than physically marking the product itself. ECF No. 303-2 at 6. Sigmatel did so, VLSI contends, by identifying its patents (including, explicitly, both the '187 and '522 Patents) on a datasheet on its publicly available website. See ECF No. 303-24. This webpage shows that Sigmatel's products are covered by Sigmatel's patented technology, but it does not attribute specific patents to specific products.
Further, VLSI contends persons visiting the Sigmatel website would have encountered Sigmatel news postings such as the ITC case involving Sigmatel and Actions Semiconductor, which involved both the '187 and '522 Patents and the 35XX product line. VLSI argues that these various news postings discussing the ITC case therefore communicated to the public that Sigmatel's '522 and '187 Patents covered certain of Sigmatel's products. But, none of the press releases say anything about the 35XX products nor associate any Sigmatel product with any patent.
II. LEGAL STANDARD
Summary judgment must be rendered when the pleadings, the discovery and disclosure materials on file, and any affidavit show that there is no genuine dispute as to any material fact and that the moving party is entitled to a judgment as a matter of law. FED. R. CIV. P. 56(a); Washburn v. Harvey, 504 F.3d 505, 508 (5th Cir. 2007). A dispute regarding a material fact is "genuine" if the evidence is such that a reasonable jury could return a verdict in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). When ruling on a motion for summary judgment, a court is required to view all inferences drawn from the factual record in the light most favorable to the nonmoving party. Matushita Elc. Indus. Co. v. Zenith Radio, 475 U.S. 574, 587 (1986). A court also "may not make credibility determinations or weigh the evidence" in ruling on a motion for summary judgment." Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000).
Once the moving party has made an initial showing that there is no evidence to support the nonmoving party's case, the party opposing the motion must come forward with competent summary judgment evidence of the existence of a genuine fact issue. Matushita, 475 U.S. at 586. Mere conclusory allegations are not competent summary judgment evidence; therefore, they are insufficient to defeat a motion for summary judgment. Turner v. Baylor Richardson Med. Ctr., 476 F.3d 331, 343 (5th Cir. 2007). Unsubstantiated assertions, improbable inferences, and unsupported speculation are not competent summary judgment evidence. Id. The party opposing summary judgment is required to identify specific evidence in the record and to articulate the precise way that evidence supports their claim. Adams v. Travelers Idem. Co. of Conn., 465 F.3d 156, 164 (5th Cir. 2006). Rule 56 does not impose a duty on the court to "sift through the record in search of evidence" to support the nonmovant's opposition to the motion for summary judgment. Id. "Only disputes over facts that affect the outcome of the suit under the governing laws will properly preclude the entry of summary judgment." Anderson, 477 U.S. at 248. Disputed fact issues which are "irrelevant and unnecessary" will not be considered by a court in ruling on a summary judgment motion. Id. If the nonmoving party fails to make a showing sufficient to establish the existence of an element essential to its case and on which it will bear the burden of proof at trial, summary judgment must be granted. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986).
Under 35 U.S.C. § 287(a), a patentee that makes or sells a patented article must mark such articles or else no damages can be recovered before the date the alleged infringer received actual notice of the alleged infringement:
Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them . . . may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or by fixing thereon the word "patent" or the abbreviation "pat." together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent . . . . In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.35 U.S.C. § 287(a). "[T]he marking statute serves three related purposes: (1) helping to avoid innocent infringement; (2) encouraging patentees to give public notice that the article is patented; and (3) aiding the public to identify whether an article is patented." Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1366 (Fed. Cir. 2017).
Under § 287(a), a patentee may mark a patented article by placing the patent number on the article. The statute also allows a patentee to virtually mark the patented article "by fixing thereon the word 'patent' or the abbreviation 'pat.' together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent." 35 U.S.C. § 287(a). As set forth in the statute, the posting must "associate the patented article with the number of the patent." Id. Thus, a mere direction to an Internet website that simply lists patents—without mentioning associating any patent with a specific patented article—does not satisfy the marking obligation as a matter of law. See Mfg. Resources Int'l Inc. v. Civiq Smartscapes LLC, 397 F. Supp. 3d 560, 578 (D. Del. 2019) ("MRI"). The marking obligation of a "patentee" under § 287(a) extends to subsequent assignees of the patent. See Horatio Washington Depot Techs. LLC v TOLMAR Inc., 2018 WL 5669168, *8 (D. Del. 2018). The patentee bears the burden of proving compliance with § 287(a). Arctic Cat, 876 F.3d at 1366.
VLSI bears the burden of proving compliance with § 287(a). Id. Once the alleged infringer identifies products "it believes are unmarked 'patented articles' subject to § 287[,]" "the patentee bears the burden to prove the products identified do not practice the patented invention." Id. at 1368.The alleged infringer's initial burden of production is a "low bar" and can be satisfied by identifying those products the alleged infringer believes practices the patents. Id.
After pointing to the ITC decision that the 35XX chips practiced at least one claim of the '187 and '522 patents, Intel identified the Sigmatel 35XX chips as unmarked by producing a photograph of the chip and the 35XX datasheet, demonstrating that neither were marked with any patent numbers. From there, the burden shifted to VLSI to prove either the identified products do not practice the patented invention or, if they do practice the patented invention, they were properly marked.
First, there is no dispute that the Sigmatel 35XX products were sold in the United States and practiced the '522 and '187 patents. ECF No. 258-114 at 114, 121. Thus, VLSI must show that the chips were properly marked in order to establish pre-suit damages. There is no dispute that patent numbers are not displayed on the chips themselves, so the Court turns to other proffered evidence of marking from VLSI.
VLSI points to two of Sigmatel's webpages to show the chips were properly marked, but both fail as a matter of law. As a matter of course, the statute allows for a "label containing a like notice." VLSI argues that because the microchips were too small to be marked with a list of patents, the 35XX datasheet which mentioned "[a]dditional product...information can be obtained by going to the SigmaTel website at: www.sigmatel.com" satisfies the "like notice" provision of the statute. ECF No. 303-25 at 2. Although the link above only directed a user to Sigmatel's homepage, not the patents page, even if the user stumbled upon the patents page, they would find no statement that the '522 and '187 patents were practiced by the 35XX products or any others. Rather, they would find a 15x4 cell datasheet listing numerous patents. This Court adopts the following reasoning of the Delaware Court that rejects this sort of "research project:"
A patentee may not rely on the mere fact that the product is marked with the website for "association"; the statute is clear that it is the function of the website to associate the patent and the patented article. This requirement ensures that virtual marking provides a level of notice commensurate with that of physical marking—the product is associated with the patent, even where a patentee may use a single website to mark multiple products. Mere direction to a general website listing patents for all the patentee's products does not create this same association. . . Thus, it is clear from the plain language of the statute itself and related statutes that the website itself must do more than simply list the patentee's patents. Simply listing all patents that could possibly apply to a product or all patents owned by the patentee on the patentee's marking website does not give the public notice. It merely creates a research project for the public.MRI, 397 F. Supp. 3d at 577. As the Delware court stated, "permitting such a practice would likely create issues under the false marking statute if association could be inferred solely from marking the product with the website address." Id. Therefore, the datasheet fails to meet § 287's association requirement and fail to mark the patented products.
Finally, VLSI proffers that the Sigmatel website pointed to press releases about the ITC action that were posted on Sigmatel's website. ECF No. 303 at 7-8. This also fails to mark the patented products as a matter of law. Linking the ITC decision to the 35XX chips would require yet another "research project" that is forbidden. As Intel mentions in their Reply brief, even if one navigated to the homepage, found a link to the press releases page, dug through articles to find the ITC case, read those articles, they would still not find mention of Sigmatel's 35XX chips. ECF No. 327 at 6. None of VLSI's press release exhibits say anything about the 35XX products or associate any Sigmatel product with a patent. Therefore, the press releases fail to meet § 287's association requirement and fail to mark the patented products.
Based on the foregoing, VLSI is not entitled to pre-suit damages for the '187 and '522 patents due to the lack of marking and Defendant's Motion for Summary Judgment is GRANTED. SIGNED this 12th day of April, 2021.
ALAN D ALBRIGHT
UNITED STATES DISTRICT JUDGE