Intermec Technologies Corp. v. Palm Inc.

Citations: 830 F. Supp. 2d 1; 2011 U.S. Dist. LEXIS 145827; 2011 WL 6356619Docket: Civ. No. 07-272-SLR

Court: District Court, D. Delaware; December 18, 2011; Federal District Court

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On May 18, 2007, Intermec Technologies Corporation filed a patent infringement lawsuit against Palm, Inc. concerning five U.S. patents, known as the Intermec patents. In response, Palm asserted infringement of its own U.S. Patent Nos. 6,665,803 and 7,096,049, referred to as the Palm patents. A memorandum opinion regarding the Intermec patents was issued by the court on September 14, 2010. Following agreement to mediate, the parties stipulated on February 16, 2011, to stay claims related to the Palm patents until mediation concluded. After unsuccessful mediation reported on May 5, 2011, the court lifted the stay. On September 15, 2011, the court issued a decision partially granting and partially denying Palm’s motion for summary judgment concerning the '803 and '049 patents, as well as Intermec’s cross-motion for summary judgment. The court's findings indicated that specific limitations were common across the independent claims of both patents, which informed the discussions of their anticipation and validity. Intermec also raised issues of indefiniteness, enablement, and written description relating to certain claims of the '049 patent, but the court found no deficiencies in these areas. Intermec's motion for reconsideration of the court's decision is currently pending, and while fact and expert discovery has concluded, a trial date has yet to be set. The court maintains jurisdiction under 28 U.S.C. 1338(a) and 35 U.S.C. 101 et seq.

Motions for reconsideration are treated as equivalent to motions to alter or amend judgments under Federal Rule of Civil Procedure 59(e). To succeed, a movant must demonstrate a significant change in controlling law, a need to correct clear legal or factual errors, or the emergence of new evidence that was not previously available. Reconsideration is not a venue for rehashing arguments already considered or for introducing new facts that were not presented earlier. Additionally, reargument may be warranted if the court has misunderstood a party's position or made an error of comprehension rather than reasoning. Intermec argues for reconsideration to address alleged errors in the court's rulings, including improper summary judgment on claims without appropriate notice, rejection of evidence regarding the 700 Mono's compliance with patent claims, and failure to apply the correct legal standard in its decisions.

Intermec challenges the clarity of a court decision regarding whether relief was granted, sua sponte, for omitted claims of the '803 and '049 patents that were not specifically requested by Palm. Intermec contends that the court erred by granting relief for these omitted claims without prior notice or an opportunity to oppose. The court clarified that its ruling only granted summary judgment on the specific claims sought by Palm, limiting the relief to claims 6, 18, and 22 of the '803 patent and claims 4-6, 9, 12, and 16-17 of the '049 patent, and did not address the parties' remaining arguments.

Regarding the anticipation of the '049 patent by the Intermec 700 Mono product, the court found that Palm's preliminary infringement contentions did not specifically address the 700 Mono. Although Intermec argued that Palm's accusations indicated the '049 patent claims were invalid, the court determined that the evidence did not meet the clear and convincing standard for anticipation. Intermec failed to provide a claim-by-claim analysis of the 700 Mono's anticipation of the '049 patent and relied instead on preliminary contentions related to a different device. Consequently, the court denied Intermec's motion for reconsideration on this issue.

The court rejected Intermec's claim that Koenck '523 anticipates the '049 patent due to insufficient evidence demonstrating that the recharger can provide the high peak current required by the transceiver when the battery charge is low. Intermec cited Koenck '523's disclosure of a portable RF terminal capable of establishing an RF link while charging, but the court clarified that the RF terminal referenced corresponds to the handheld computer system of the '049 patent, not the transceiver circuitry. Koenck's expert report made two distinct assertions regarding the RF terminal's operation and charging conditions, which Intermec conflated in its argument. The court emphasized that evidence must specifically show the transceiver's operability under low battery conditions with external power, rather than just that other circuitry of the handheld computer can function. The court found Intermec's arguments repetitive and insufficient to warrant reconsideration of its earlier ruling, thereby denying the motion regarding anticipation by Koenck '523.

The court ruled that the claim language regarding the low level limitation of the '049 patent requires no specific construction, affirming that to prove infringement, Palm only needs to show that a low level exists as defined by the claims. The claims do not mandate measurement in volts or any specific unit, nor do they require experimental determination of the low level. Instead, it suffices to demonstrate two battery charge levels, A and B, with A being greater than B, where the transceiver operates at A when not connected to the recharger, does not operate at B when disconnected, and operates at B when connected. The court identified a genuine issue of material fact regarding this limitation, which precludes summary judgment on infringement. Intermec contended that the court disregarded the requirement for a specific battery charge level, noting Palm lacks evidence of the charge level at which Intermec's devices enter suspend mode. The court denied Intermec’s motion for reconsideration, stating that Intermec did not present any change in law or new evidence, nor did it demonstrate a need to correct any clear error. The court emphasized that dissatisfaction with the court's weighing of facts does not meet the standard for reconsideration. Consequently, the court denied the motion for reconsideration. An appropriate order will follow.

The court issued an order on December 19, 2011, denying Intermec's motion for reconsideration regarding Palm's motion for summary judgment of no invalidity concerning specific claims from the '803 and '049 patents. The claims in question include claims 6, 18, and 22 of the '803 patent and claims 4-6, 9, 12, and 16-17 of the '049 patent, with the '803 patent containing 30 claims total and the '049 patent containing 20 claims. Notably, Palm did not assert independent claim 20 of the '049 patent.

Intermec relied on deposition testimony from Arvin Danielson to support its arguments, but the court highlighted that the cited testimony was taken out of context. Intermec contended that Palm failed to provide factual evidence showing that the '700 Mono was significantly different from the accused '700 Series, emphasizing that it is the patentee's responsibility to demonstrate a genuine issue of material fact when a prima facie case of anticipation is established.

The court addressed the prior art status of Koenck '523, finding that it does not anticipate the claims of the '049 patent but did not make a definitive ruling on whether Koenck '523 qualifies as prior art. The court noted that although Koenck '523 discloses a device that powers a transceiver when docked, the '049 patent specification indicates that RF transceivers require significant power for both transmission and reception, further noting that external power must be supplied to both the battery and the transceiver.