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Carnegie Mellon University v. Marvell Technology Group, Ltd.

United States District Court, W.D. Pennsylvania

November 2, 2012

MARVELL TECHNOLOGY GROUP, LTD., and Marvell Semiconductor, Inc., Defendants.

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[Copyrighted Material Omitted]

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David T. McDonald, Douglas B. Greenswag, Nicola J. Templeton, Theodore J. Angelis, K & L Gates, LLP, Seattle, WA, Eliza K. Hall, Patrick J. McElhinny, Christopher M. Verdini, Mark G. Knedeisen, Roberto Capriotti, K & L Gates, Pittsburgh, PA, for Plaintiff.

David C. Radulescu, Gregory S. Maskel, Edward J. DeFranco, Faith E. Gay, Joseph Milowic, Kathleen M. Sullivan, Raymond N. Nimrod, Robert Wilson, New York, NY, John E. Hall, Timothy P. Ryan, Eckert, Seamans, Cherin & Mellott, Pittsburgh, PA, Andrew J. Bramhall, Redwood City, CA, Anna Ison, Heather E. Belville, Kevin P. Johnson, Mark Tung, Melissa Chan O'Sullivan, Redwood Shores, CA, Brian E. Mack, Melissa J. Baily, San Francisco, CA, Derek Shaffer, Quinn Emanuel Urquhart & Sullivan LLP, Washington, DC, Steven G. Madison, Los Angeles, CA, for Defendants.




This patent infringement action is set to commence jury selection and trial on November 26, 2012. The parties have filed a number of motions in limine seeking pretrial rulings on the admissibility of certain evidence at trial. This opinion addresses Defendants' (collectively " Marvell" ) " Motion In Limine No. D11 Re: Precluding CMU From Introducing Evidence of Compliance With 35 U.S.C. § 287(a)." (Docket No. 520). By this motion, Marvell seeks to preclude Plaintiff Carnegie Mellon University (" CMU" ) from introducing evidence or argument of its alleged compliance with 35 U.S.C. § 287(a) and to exclude CMU's introduction of any evidence of pre-suit damages at trial given its alleged non-compliance with this statute. ( Id. ). CMU opposes the motion and argues that the limitations on pre-suit damages set forth in § 287(a) do not apply in this case. (Docket No. 569). The parties presented oral argument as to this motion at a hearing on October 18, 2012. (Docket No. 591 at 26-50). The Court has fully considered the parties' slide presentations and the transcript of that proceeding. (Docket Nos. 587, 588, 591). For the following reasons, Marvell's Motion [520] is granted, in part and denied, in part.


As the parties are well aware of the background facts of this case, the Court recounts only those facts necessary to resolve the pending motion. CMU filed this lawsuit on March 6, 2009, alleging that Marvell infringes two of its patents, i.e., U.S. Patent Nos. 6,201,839 (" the '839 Patent" ) and 6,438,180 (" the '180 Patent" ) (collectively, " the CMU Patents" ). In its Disclosure of Asserted Claims and Preliminary Infringement Contentions served on October 16, 2009, CMU asserted that Marvell infringed claims 1-5, 11, 16, 19 and 23 of the '839 Patent and claims 1, 2, and 6 of the '180 Patent. ( See Def. Ex. 3, Docket No. 522-3 at 2-3). The claims asserted in the ' 180 Patent (1, 2, and 6) are method

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claims. ( Id. ). The claims asserted in the '839 Patent include both method (1, 2, 3, 4, 5, 11, 16) and system claims (19 and 23). ( Id. ). Marvell argues that the system claims constitute apparatus claims because claim 19 is directed to a " detector circuit" while claim 23 is directed to a " system for recording information on a magnetic medium." (Docket No. 521 at n. 2). CMU has not contested that claims 19 and 23 constitute apparatus claims. ( See Docket Nos. 569, 591 (counsel commenting that " the apparatus claim that was asserted ... does not read on the Marvell chips because it required noise to variance matrices, so we no longer asserted that claim." )).

The challenged claims in this case have been consistently categorized by the parties into two separate groups (i.e., Group I and Group II). The Group I claims include claims 1 and 2 of the '180 Patent and 1-5 of the '839 Patent while the Group II claims include claims 11, 16, 19 and 23 of the ' 839 Patent and claim 6 of the '180 Patent. See CMU v. Marvell, Civ. A. No. 09-290, 2011 WL 4527353, at *3 n. 3 (W.D.Pa. Sept. 28, 2011). This Court denied Marvell's motion for summary judgment as to the Group I claims, see CMU v. Marvell, 2011 WL 4527353, but later granted Marvell's motion for summary judgment as to the Group II claims. See CMU v. Marvell, 888 F.Supp.2d 637, 640 n. 2 (W.D.Pa.2012). In reaching our decision on the Group II claims, this Court noted that the " asserted claims" included claims 19 and 23, along with the other claims in Group II. Id. at n. 1. Thus, summary judgment has been entered in favor of Marvell and against CMU as to the apparatus claims, i.e., claims 19 and 23 of the '839 Patent and only method claims remain for further litigation.

It is undisputed that CMU has never developed or sold any articles which practice the patented methods or systems in this case. (Docket Nos. 521 at 4; 569 at 6). In addition, the parties agree that CMU has likewise never specifically directed or engaged any third parties to manufacture articles which practice the patents. ( Id. ). CMU has, however, licensed the patents to entities that are associates in its Data Storage Systems Center (" DSSC" ). The language of the license granted is very broad. To this end, the relevant portion of the Associate Agreement between CMU and licensee Seagate [1] provides, in relevant part, that:

All inventions, whether or not patentable, conceived of or first reduced to practice in the course of or under this Agreement by any Center personnel while engaged in the activities of the Center (hereinafter referred to as " Inventors" [) ] shall become the property of the University. The University shall grant to the Corporation, and all other Associates a worldwide, irrevocable, royalty-free license, to make, have made for their own use, or sell the product of the Inventions. The University agrees that at such time as it appears to the University, or the Associates that research efforts in the center have isolated a patentable invention, device, idea, etc., it will proceed with all diligence to prosecute the patent application. In the event that the University decides to offer licenses under said Inventions to third parties, said licenses shall be royalty bearing, as decided by the University, and said royalty shall be utilized at the Center to sponsor further research.

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Def. Ex. 6, Associate Agreement at § 2.b (emphasis added). Relevant here, the Associate Agreement does not include specific terms or conditions obligating the licensee to mark any articles produced under the patents in accord with 35 U.S.C. § 287(a) by placing the patent number on the article. ( See id. ). The Agreement likewise does not include any more general provisions, such as a requirement that the licensee comply with all applicable patent laws, which could plausibly be interpreted to require the licensee to mark any articles produced under the license. ( Id. ). CMU also admits that it placed no requirements on its licensees to mark any articles produced under the patents and sold to third parties. See Def. Ex 4, Plaintiff's Objections and Responses to Defendants' Second Set of Interrogatories at 24 (" For both CMU Patents, CMU is not aware of any products made, sold, offered for sale and/or imported into the United States by a licensee of the CMU Patents that was marked in compliance with 35 U.S.C. § 287" ).

CMU alleges that the read channel chips (" Accused Chips" ) produced by Marvell infringe its patents as Marvell practices the patented methods during its sales cycle. (Docket No. 1). CMU further avers that Marvell indirectly infringes the patented methods as it induced its customers to infringe the patents by using the methods present in the Accused Chips through their operation. ( Id. ). Marvell first sold the Accused Chips to certain of its customers on March 6, 2003. See CMU v. Marvell, 890 F.Supp.2d 602, 2012 WL 3679540, at *2 (W.D.Pa. Aug. 24, 2012). Between March 6, 2003 and March 31, 2010, Marvell sold 1,469,070,073 Accused Chips. Id. Marvell continues to sell its allegedly infringing products and further sales data is to be produced by Marvell prior to trial. Id. at n. 4. Among Marvell's customers who purchased the Accused Chips were several entities, including Seagate, who were also parties to an Associate Agreement with CMU and granted the aforementioned license " to make, have made for their own use, or sell the product of the Inventions." See Def. Ex. 6, Associate Agreement at § 2.b.

This Court previously held that the effect of this license is that Marvell could not be liable for indirect infringement resulting from its sales of the Accused Chips to Seagate and Seagate's practice of the allegedly infringing methods.[2] See CMU v. Marvell, 890 F.Supp.2d at 608-10, 2012 WL 3679540, at *5-6. We reasoned that Seagate's rights under the license precluded a claim of indirect infringement against Marvell. Id. (" This language [of the license] makes clear that Seagate's own use is not infringing, which in turn means that Marvell cannot be indirectly liable for infringement." ). This Court also found that Seagate had not exercised its " have made" rights under the license because there was no evidence that Seagate instructed Marvell to practice the alleged infringing methods or to design the chips in accordance with the patents. Id. at *6. Instead, the evidence showed that Marvell's design of the chips was independent of the exercise of any rights Seagate held under the license and that the Marvell-Seagate relationship was not consummated until after Marvell achieved a " design-win" under its sales cycle and had already allegedly infringed the patents by practicing the patents. Id.

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The parties agree that Seagate incorporated the Accused Chips into its high density disk drives (" HDD drives" ) and then placed the HDD drives (and Accused Chips) into the stream of commerce by selling these devices to third parties. (Docket Nos. 521, 569). Marvell's other customers which held licenses with CMU sold products containing the Accused Chips to third parties as well. ( Id. ). During discovery, CMU admitted that it has no evidence that any of these articles sold by its licensees were marked in accord with 35 U.S.C. § 287(a) through its answers to interrogatories, deposition testimony of Robert Wooldridge, and the report of its expert witness Catherine Lawton. (Def. Exs. 4, 5, 6). In its responses to Marvell's interrogatories, CMU expressly " reserve[d] the right to update this response pending further fact discovery, including the discovery from third-party HDD manufacturers, which discovery is presently ongoing." (Def. Ex. 4 at 24). To this point, CMU has not supplemented its discovery responses to include any evidence that its licensees marked any of the articles which were sold. However, CMU suggests now that its licensees were unaware that the Accused Chips infringed the patents given admissions by Marvell in this litigation that it used " black box" technology which had the effect of shielding its customers from learning of the design and elements of the Accused Chips. ( See Docket No. 569).


Marvell has styled the present motion as a motion in limine seeking to exclude CMU from introducing evidence at trial of its compliance with 35 U.S.C. § 287(a) and damages prior to the commencement of this suit on March 6, 2009. (Docket No. 520). Marvell contends that the application of Rules 26 and 37(c)(1) of the Federal Rules of Civil Procedure compel such result. (Docket Nos. 520, 521). CMU initially objects to the characterization of this motion as one in limine. (Docket No. 569). CMU contends that it more closely resembles a motion for summary judgment and that Marvell's motion should be denied for its failure to bring this motion in accord with the Court's deadlines for the submission of such motions which have long past. ( Id. ).

The Court agrees with CMU that courts are generally reluctant to entertain in limine motions seeking conclusive determinations on substantive claims at trial. Indeed, as CMU points out, this Court has previously denied in limine motions for raising issues that should have been raised at summary judgment, see Mavrinac v. Emergency Medicine Assoc. of Pittsburgh, Civ. A. No. 04-1880, 2007 WL 2908007, at *1 (W.D.Pa. Oct. 2, 2007) and several courts have addressed motions regarding marking under 35 U.S.C. § 287(a) at summary judgment, see e.g., Rembrandt Data Tech., LP v. AOL, LLC, 2009 WL 2242624 at *1 (E.D.Va.2009). In any event, consideration of the instant motion is within the Court's discretion and, given that CMU admits that it did not require its licensees to mark any articles in accordance with § 287(a) through the Associate Agreements and has no evidence that any of the articles in question were marked, the limitation on pre-suit damages would bar such evidence, but only if § 287(a) applies given the facts of this case. Accordingly, the Court will decide this disputed legal issue in the context of the present motion in limine.

Federal Circuit precedent guides the determination of the proper statutory construction and interpretation of patent laws. See Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272, 1279 (Fed.Cir.2012). However, ...

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