M-Red Inc. v Panasonic Corporation et. al.

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Semcon IP Inc. v Amazon.com Inc.

Memorandum Opinion and Order Denying Amazon's Motion for Protective Order and Granting-In-Part Semcon's Motion to Compel.

Before the Court is Defendant Amazon.com, Inc.’s (“Amazon”) Motion for Protective Order (the “Motion for Protective Order”) (Dkt. No. 70) and Plaintiff Semcon IP, Inc.’s (“Semcon”) Motion to Compel Amazon.com, Inc. to Provide Discovery (the “Motion to Compel”) (Dkt. No. 71). Having considered the parties’ arguments and relevant authorities, the Court hereby DENIES Amazon’s Motion for Protective Order, GRANTS-IN-PART Semcon’s Motion to Compel, with the remainder of Semcon’s Motion to Compel CARRIED, all for the reasons stated herein.

I. Discovery Regarding Accused Products

Semcon sued Amazon for patent infringement on May 9, 2018. (Dkt. No. 1.) The Patents-in-Suit are U.S. Patent Nos. 7,100,061; 7,596,708; 8,566,627; and 8,806,247, and generally cover methods and apparatuses for conserving power and resources used by a computer. (Id. ¶ 14.) Semcon alleges that certain non-parties, such as Qualcomm Inc., Texas Instruments Inc., and Amlogic, Inc., sell products which embody System-on-a-Chips (“SoCs”), “which . . . perform [a type of power management technique called] Dynamic Voltage and Frequency Scaling or ‘DVFS,’ (sometimes alternatively referred to as Dynamic Clock and Voltage Scaling and ‘DCVS’).” (Id. ¶ 15.) According to Semcon, certain Amazon products infringe the Patents-in-Suit because they “utilize SoCs and associated software that perform[] DCVS or DVFS for power management.” (Id. ¶ 16.)

Pursuant to those allegations, Semcon served discovery on Amazon seeking information about “Amazon Products,” which it defined as, inter alia, “all products that include or utilize adaptive power control and/or dynamic voltage frequency scaling (‘DVFS’).” (Dkt. No. 82-2 at 2; see, e.g., id. at 9 (Interrogatory No. 1, Semcon’s First Set of Interrogatories, November 20, 2018).) Amazon provided Semcon with a “chart listing [only] the Amazon devices identified in Semcon’s Infringement Contentions.” (Dkt. No. 70 at 6.) Consistent with its initial request, Semcon asked Amazon to supplement its response to include all products that perform DVFS. (Dkt. No. 71-2 (February 5, 2019 Letter from Semcon to Amazon).) Amazon explained that “it could not perform searches for products that perform DVFS,” but that it would investigate any products that Semcon believes does perform such power saving techniques. (Dkt. No. 70 at 6; see also Dkt. No. 71-3 (March 7, 2019 Email from Semcon to Amazon).) The parties continued to meet-and-confer on the issue, with Amazon ultimately not producing any of the requested information. (Dkt. No. 70-2 (April 11, 2019 Letter from Semcon to Amazon).)

On June 13, 2019, Semcon deposed Pushkar Gejji, an Amazon Rule 30(b)(6) witness. (Dkt. No. 71-4 (Rough Deposition Transcript of Mr. Gejji deposition).) Mr. Gejji testified that certain Amazon products, such as Amazon Kindle e-readers, use NXP/Freescale SoCs that perform DVFS, and that he was not aware of any public documents that would uncover the same. (Id.) Semcon argues that this testimony shows that “Amazon’s representation—that it would be impossible to search for Amazon Products that include or utilize adaptive power control and/orDVFS—[is] false” and now seeks an order compelling Amazon to produce discovery about any products that use DVFS. (Dkt. No. 71 at 3.) Specifically, Semcon seeks an order compelling Amazon to “(1) inquire of NXP regarding whether each of the Amazon Products containing NXP/Freescale SoCs include or use adaptive power control and/or DVFS [collectively, the “DVFS Products”]; (2) supplement its responses to Interrogatory Numbers 1 through 4, and 9 to include [information about the DVFS Products];” (3) supplement its document production to include [information about the DVFS Products];” and (4) produce a Rule 30(b)(6) witness to testify regarding Topic Numbers 1 through 13 as they relate to NXP/Freescale SoCs.” (Dkt. No. 71 at 3–4.)

Amazon opposes Semcon’s request and separately moves for a protective order precluding discovery on its Kindle e-readers. (Dkt. No. 70.) Amazon argues that Semcon did not specifically identify Kindle e-readers with NXP/Freescale SoCs in its contentions and that “Semcon’s accusations against different Amazon products, that use different SoCs from different suppliers, do not provide notice that Kindle e-readers with NXP/Freescale SoCs are accused.” (Id. at 3.) Amazon also argues that Semcon failed to diligently pursue the discovery it now seeks to compel. (Id. at 3–7.) Amazon points to various websites that allegedly show that “the existence of Amazon’s Kindle e-readers, their relevant source code, and the fact that they used NXP/Freescale SoCs, was all publicly [available].” (Id. at 4.) Finally, Amazon contends that permitting the requested discovery would be “highly prejudicial.” (Id. at 7.) Since the accused SoCs are provided by third-parties, Amazon would have to independently investigate how those chips work to adequately prepare a defense. Amazon would not have sufficient time to do such given that fact discovery closes on June 28, 2019. (Id.)

Considering the above arguments and the parties’ briefing, the Court finds that Semcon is entitled to discovery regarding Amazon products that utilize DVFS, including Amazon’s Kindle e-reader with NXP/Freescale SoC. Discovery is not limited to only those products specifically identified in the plaintiff’s initial infringement contentions. FED. R. CIV. P. 26(b)(1) (“Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense . . .”); GeoTag, Inc. v. Frontier Commc’ns Corp., No. 2:10-cv-00265-JRG, 2013 WL 12141427, at *2 (E.D. Tex. June 26, 2013) (allowing discovery into products that were “reasonably similar” to those identified in the parties’ contentions). A plaintiff may also seek discovery concerning products that are “reasonably similar” to the accused products in the case if (1) the infringement contentions gave notice of a specific theory of infringement, and (2) the products it seeks discovery of operate in a manner reasonably similar to that theory. GeoTag, 2013 WL 12141427, at *2. Amazon does not contest that Semcon’s theory of infringement for the Kindle e-reader with NXP/Freescale SoCs would be reasonably similar to the theory disclosed in Semcon’s contentions for the other accused products. (Dkt. No. 70 at 3 (“Setting aside the first two hurdles Semcon would have to clear, Semcon cannot demonstrate the requisite diligence . . .”).)1

Also, the Court is not persuaded that Semcon failed to diligently pursue such discovery. Semcon notified Amazon about any alleged deficiencies in discovery as early as February 5, 2019—well in advance of the June discovery deadline—and both parties continually met and conferred in an effort to resolve the issues. (Dkt. No. 71-2 (February 5, 2019 Letter from Semcon to Amazon); Dkt. No. 71-3 (March 7, 2019 Email from Semcon to Amazon); Dkt. No. 70-2 (April 11, 2019 Letter from Semcon to Amazon); Dkt. No. 71-5 (June 14, 2019 Email from Semcon to Amazon).) Responding to Semcon’s discovery requests, Amazon stated that it could not search for any products that use DVFS, but that it would investigate any such products that Semcon believed did use DVFS. (Dkt. No. 70 at 6.) The Court finds that it was reasonable for Semcon to rely on those representations as Amazon, and not Semcon, would be in the best position to determine whether Amazon possessed any products that use DVFS. However, after learning in the deposition of Mr. Gejji that Amazon does potentially make such products (e.g., the Amazon Kindle e-reader), Semcon promptly sought additional discovery. Semcon has not been dilatory or laid behind the log.

Accordingly, the Court finds that Amazon’s Motion for Protective Order should be denied and Semcon is entitled to pursue discovery regarding Amazon products that perform DVFS, including Amazon’s Kindle e-reader with NXP/Freescale SoCs.

II. Discovery Regarding Pre-Suit Notice of Infringement

Semcon also moves for an order compelling Amazon to provide discovery on “Amazon’s knowledge of the patents-in-suit and notice of its infringement.” (Dkt. No. 71 at 1.) While Amazon states that it first became aware of the Patents-in-Suit when the instant suit was filed, “Semcon contends that Amazon may have been put on notice [much earlier] through communications with Intellectual Ventures and/or through receipt of a subpoena in Semcon IP Inc. v. Huawei Device USA Inc., et al., No. 2:16-cv-00437-JRG-RSP (E.D. Tex.).” (Id. at 4.) Semcon explains that Amazon’s Rule 30(b)(6) witness, Mr. Scott Hayden, testified that (1) “Amazon did not search for or investigate whether Amazon communicated with Intellectual Ventures regarding any of the patents-in-suit” and (2) “that he was informed internally about a June 17, 2017 subpoena to Amazon concerning the same patents-in-suit in the Semcon v. Huawei case,” but that Amazon did not investigate whether it became aware of the Patents-in-Suit at that time. (Id. at 5.) Semcon argues that “Amazon’s position evinces willfulness blindness” and thus discovery about its communications with Intellectual Ventures and response to the Huawei subpoena are relevant to this case. (Id.)

Amazon argues that Semcon’s Motion violates Local Rule CV-7(h). The local rules provide that parties must meet-and-confer in good faith and conclude that such discussions have ended in an impasse before filing an opposed discovery motion. LR. CV-7(h). Amazon explains that “[w]hen Semcon filed its Motion, the parties were not at an impasse on th[e] issue [of notice.]” (Dkt. No. 84 at 5.) According to Amazon, at the parties’ June 28, 2019 meet-and-confer, “Amazon agreed to investigate and follow-up regarding its first awareness of the patents-in-suit,” and “Semcon gave no indication it was filing a motion to compel.” (Id.) The next day, Semcon emailed Amazon, stating that it believed the parties had reached an impasse and filed the instant Motion. (Dkt. No. 84-9 (June 19, 2019 Email from Semcon to Amazon).) Amazon subsequently responded that (1) it understood that the parties had not yet reached an impasse; (2) it had “agreed [during the meet-and-confer to] go back and confirm [its prior statement that it first learned of the Patents-in-Suit at the time suit was filed]; and [3] [that it] is currently looking into this topic further.” (Id. (June 20, 2019 Email from Amazon to Semcon).) Amazon contends that this correspondence shows that the parties have not reached an impasse, and as such, it was improper for Semcon to file the instant Motion.

Having reviewed the parties’ briefing and correspondence attached thereto, the Court concludes that it does not have all of the requisite information before it to make a final determination at this time. Accordingly, the Court hereby CARRIES this portion of Semcon’s Motion to Compel pending the hearing set on July 22, 2019. Both parties are directed to use their continuing best efforts to resolve this issue prior to the hearing date through their continuing meet-and-confer efforts.

III. Conclusion

Based on the foregoing, the Court hereby DENIES Amazon’s Motion for Protective Order (Dkt. No. 70), and GRANTS-IN-PART Semcon’s Motion to Compel Amazon.com, Inc. to Provide Discovery (Dkt. No. 71). It is ORDERED that Amazon shall (1) inquire of NXP regarding whether each of the Amazon Products containing NXP/Freescale System-on-a-Chips include or use adaptive power control and/or Dynamic Voltage and Frequency Scaling; (2) supplement its responses to Semcon’s Interrogatory Numbers 1 through 4, and 9 to include Amazon Products containing NXP/Freescale System-on-a-Chips that include or use adaptive power control and/or Dynamic Voltage and Frequency Scaling; (3) supplement its document production to include Amazon Products containing NXP/Freescale System-on-a-Chips that include or use adaptive power control and/or Dynamic Voltage and Frequency Scaling; and (4) produce a Federal Rule of Civil Procedure 30(b)(6) witness to testify regarding Semcon’s Topic Numbers 1 through 13 as they relate to NXP/Freescale System-on-a-Chips.

The Court CARRIES the remaining portion of Semcon’s Motion to Compel regarding discovery on Amazon’s knowledge of the patents-in-suit and notice of its infringement pending the hearing set on July 22, 2019.

Case No. 2:18-cv-00192

Semcon IP Inc. v. AsusTek et. al.

CLAIM CONSTRUCTION MEMORANDUM AND ORDER

Before the Court is the opening claim construction brief of Semcon IP Inc. (“Plaintiff”) (Dkt. No. 58, filed on May 8, 2019),1 the response of Capri Holdings Ltd., Michael Kors (USA), Inc., Michael Kors Retail, Inc., and ASUSTeK Computer Inc. (collectively “Defendants”) (Dkt. No. 61, filed on May 21, 2019), and Plaintiff’s reply (Dkt. No. 63, filed on May 29, 2019). The Court held a hearing on claim construction on June 20, 2019. Having considered the arguments and evidence presented by the parties at the hearing and in their briefing, the Court issues this Order.

Analysis

The issue in dispute distills to whether the patentee rescinded its prosecution-history disclaimer of an operating system. It did.

This is substantially the same issue before the Court in Huawei. 2017 U.S. Dist. LEXIS 108040, at *17–26. The Court reiterates the Huawei ruling and reasoning and rejects Defendants’ proposed construction. It is meaningful that the examiner stated that “the claim language does not require the processor determining to be performed without regards to the operating system, i.e. via processor hardware only” and the patentee did not amend the claims to address the examiner’s statement but rather added an entirely different limitation. ’061 Patent File Wrapper April 27, 2004 Office Action at 2, Dkt. No. 58-9 at 4; ’061 Patent File Wrapper July 16, 2004 Interview Summary, Dkt. No. 58-14 at 3; Huawei, 2017 U.S. Dist. LEXIS 108040, at *25–26. As there was nothing for the examiner to revisit, the patentee’s acquiescence was necessarily “sufficiently clear to inform the examiner that the previous disclaimer, and the prior art that it was made to avoid, may need to be re-visited.” Hakim v. Cannon Avent Grp., 479 F.3d 1313, 1318 (Fed. Cir. 2007).

Acquiescence to an examiner’s position does not require a formal and express statement, as Defendants contend. Springs Window Fashions LP v. Novo Indus., L.P. distinguishes a patentee’s retraction of statements it made from acquiescence to an examiner’s position that is contrary to the patentee’s position. 323 F.3d 989, 995 (Fed. Cir. 2003) (finding no rescission of disclaimer when the patentee “never retracted any of his statements distinguishing [the prior art] nor did he acquiesce in the examiner’s comments regarding the overlapping scope of [the prior art]”). Consistent with the ordinary meanings of “retract”9 and “acquiesce,”10 the Federal Circuit’s distinction suggests retraction of a position would require the expression suggested by Defendants whereas acquiescence to a contrary position may be signaled by acceptance without protest. The patentee in Springs Window did not comply with the examiner’s position without protest, but rather expressly protested, stating in addition to other patentability grounds, it “maintains the arguments set forth in the prior Amendment concerning distinguishing of [the prior art] from the claims previously presented, on the merits.” Id. at 994. That is, the Springs Window patentee did not acquiesce; instead, it protested. The patentee here reacted to the examiner’s position in a significantly different fashion. Instead of protesting the examiner’s position, it amended the claims to distinguish them from the Horden reference on other grounds. See, e.g., ’061 Patent File Wrapper July 16, 2004 Interview Summary, Dkt. No. 58-14 at 3; Huawei, 2017 U.S. Dist. LEXIS 108040, at *25–26.

Defendants also cite Desper Products, Inc. v. QSound Labs, Inc., 157 F.3d 1325 (Fed. Cir. 1998) as explicitly rejecting the efficacy of a tacit or passive rescission of a prosecution-history disclaimer, but Desper does not stand for the rule Defendants propose. Rather, Desper addressed a claim-scope argument that was explicitly accepted by the examiner. Id. at 1333–34. Specifically, in response to a rejection over a British patent, the Desper patentee amended the claims, argued the amended claims included a “limitation that the channel signals be maintained separate and apart,” and contended that “[i]n view of the amendments to the claims hereby, as well as the above arguments” the claims are “neither shown nor suggested in any of the cited references, alone or in combination.” Id. at 1334. The examiner agreed in an immediately subsequent examiner interview, indicating “that the amended claims ‘appear to distinguish over art of record in prior case (FR 1,512,059 & B 942,459).’” Id. The examiner also rejected the amended claims based on a new prior-art reference. Id. In a child application, and “after the parent application had been rejected in view of the British patent,” the Desper patentee amended the claims to include the “limitation that the channel signals be maintained separate and apart.” The related application was then rejected on a reference other than the British patent. Id. “Thus, in the file history of both patents, the limitation that the channel signals be maintained separate and apart was added to overcome the prior art rejection based on the British reference, and in both cases it succeeded.” Id. (emphasis added). That is, the examiner never took a position contrary to the Desper patentee’s position that the claims included a separate-and-apart limitation. Rather, the examiner indicated agreement with the patentee’s position. That the examiner “shifted to a different focus does not blunt the impact of those remarks made to overcome the prior rejection.” Id. at 1336.

Desper is distinguishable from the present circumstance in that the examiner here—rather than agreeing with patentee’s prosecution claim-scope arguments regarding the operating system—explicitly rejected those claim-scope arguments. In Desper, there was no contrary position to which the Desper patentee could acquiesce. Here, the patentee was presented with a direct and explicit rejection of its operating-system argument and chose to give up on that argument—it acquiesced to the examiner’s contrary position.

Ultimately, given the examiner’s statement that “the claim language does not require the processor determining to be performed without regards to the operating system, i.e. via processor hardware only,” the patentee’s failure to amend the claims to exclude the operating system, the patentee’s amendment of claims to add a different limitation, and the patentee’s failure to protest the examiner’s position on the scope of the claim language, it is sufficiently clear that the patentee acquiesced to the examiner’s position. A member of the public reading the prosecution history would see that the last statement on the operating-system argument was an explicit rejection of that argument by the agency tasked with examining the patent application. Thus, the public-notice function is served by giving effect to the patentee’s acquiescence to the examiner’s position that the claims do not exclude an operating system performing the processor determining functions.

Accordingly, the Court construes these terms as it did in Huawei and Amazon.com, as follows:

• “computer processor” means “CPU”;

• “processor” means “CPU”;

• “processing unit” means “computing portion of CPU”; and

• “processing device” means “computing portion of CPU.”

Analysis

The issue in dispute is whether the meanings of these terms are reasonably certain. They are.

This is substantially the same dispute that was before the Court in Huawei. 2017 U.S. Dist. LEXIS 108040, at *52–56. The Court reiterates the Huawei ruling and reasoning and rejects Defendants’ arguments that “reducing a magnitude of a difference” renders any claim indefinite. In the context of the claims, the terms mean that operating frequency is brought closer to the highest allowable frequency and that the voltage applied to the processing device is brought closer to the lowest allowable voltage level. That is, the reducing the “magnitude” of the difference requires raising the frequency or voltage when lower than the allowable frequency or voltage (which suggests a negative difference becomes less negative, even though making a negative number less negative is increasing the value of the number) and requires lowering the frequency or voltage when lower than the allowable frequency or voltage (which suggests a positive difference becomes less positive).

Accordingly, Defendants have not proven the “reducing a magnitude of a difference” or “reducing the magnitude of the difference” terms render any claim indefinite and construes the terms as follows.

• “reducing a magnitude of a difference” means “reducing the absolute value of the difference”; and

• “reducing the magnitude of the difference” means “reducing the absolute value of the difference.”

Analysis

As the parties have expressly adopted and rested on the arguments made in the claim-construction proceeding in the Amazon.com case, the Court adopts and reiterates the Amazon.com ruling and reasoning. Amazon.com, 2019 U.S. Dist. LEXIS 79846, at *21–52

Accordingly, the Court construes these voltage-change terms by construing “executing instructions” and variants in those terms in the claims at issue as follows:

• “executing … instructions” means “executing … instructions using the core clock”;

• “execution of … instructions” means “execution of … instructions using the core clock”;

• “execute instructions” means “execute instructions using the core clock”; and

• “executes … instructions” means “executes … instructions using the core clock.”

V. CONCLUSION

The Court adopts the constructions above for the disputed and agreed terms of the Asserted Patents. Furthermore, the parties should ensure that all testimony that relates to the terms addressed in this Order is constrained by the Court’s reasoning. However, in the presence of the jury the parties should not expressly or implicitly refer to each other’s claim construction positions and should not expressly refer to any portion of this Order that is not an actual construction adopted by the Court. The references to the claim construction process should be limited to informing the jury of the constructions adopted by the Court.

Case No. 2:18-cv-00193 (Lead Case)