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Comcast Cable Communications, LLC v. Sprint Communications Co., LP

United States District Court, E.D. Pennsylvania

August 16, 2017

COMCAST CABLE COMMUNICATIONS, LLC, Plaintiff,
v.
SPRINT COMMUNICATIONS COMPANY, LP, Defendant.

          MEMORANDUM

          DuBois, J.

         TABLE OF CONTENTS

         I. INTRODUCTION ................................................................................................................... 2

         II. RENEWED MOTIONS FOR JUDGMENT AS A MATTER OF LAW ............................... 5

         A. Standard of Review ............................................................................................................. 5

         B. Comcast's Renewed Motion for Judgment as a Matter of Law That Claim 113 of the ‘870 Patent is Not Obvious ................................................................................................................. 6

         1. Applicable Law ................................................................................................................ 7

         2. Substantial Evidence that the Challenged Limitations Existed in the Prior Art .............. 9

         3. No Substantial Evidence of Motivation to Combine or Likelihood of Success ............ 19

         4. Conclusion ..................................................................................................................... 26

         C. Comcast's Alternative Motion for a New Trial on Obviousness ...................................... 27

         D. Sprint's Renewed Motion for Judgment as a Matter of Law Under Rule 50 ................... 28

         1. Applicable Law .............................................................................................................. 28

         2. Discussion ...................................................................................................................... 29

         III. COMCAST'S MOTIONS RELATING TO DAMAGES ..................................................... 33

         A. Comcast's Motion for a New Trial on Damages .............................................................. 34

         1. Standard of Review ........................................................................................................ 34

         2. Applicable Law .............................................................................................................. 35

         3. Sufficient Evidence to Sustain the Jury Verdict ............................................................ 36

         4. Forward Citation Analysis ............................................................................................. 39

         5. References to other Sprint patents and a 1999 Nokia Invention Report ........................ 41

         6. Conclusion ..................................................................................................................... 43

         B. Comcast's Motion to Amend Final Judgment to Add Pre- and Post-Judgment Interest .. 44

         1. Pre-Judgment Interest .................................................................................................... 44

         2. Post-Judgment Interest ................................................................................................... 48

         3. Application of Pre- and Post-Judgment Interest ............................................................ 48

         IV. CONCLUSION ..................................................................................................................... 49

         I. INTRODUCTION

         This case involves claims of patent infringement between Comcast Cable Communications, LLC, and Sprint Communications Company, LP. After withdrawal of several claims of infringement, only Comcast's claim for infringement of its U.S. Patent Number 6, 885, 870 (“the ‘870 patent”) against Sprint and Sprint's Counterclaims for infringement of its U.S. Patents Numbers 6, 754, 907 and 6, 757, 907 (“the ‘907 patents”) against Comcast remained in the case. The Court granted summary judgment in favor of Comcast as to Sprint's counterclaims under the ‘907 patents by Memorandum and Order dated August 24, 2016. See Comcast Cable Commc'ns, LLC v. Sprint Commc'ns Co., LP (Comcast v. Sprint II), 203 F.Supp.3d 499 (E.D. Pa. 2016). That Memorandum contains the factual background, procedural history, and details of the underlying patents in this case. For purposes of this Memorandum, the following summary of the invention will suffice, and additional facts will be incorporated as necessary.

         The ‘870 patent, titled “Transferring of a Message, ” claims a method “for inquiring about information relating to a [wireless] terminal of a cellular network from the cellular network, from a messaging server external to the cellular network.” ‘870 patent, at 2:45-48. The preferred embodiment of the invention can be summarized as follows:

1. A multimedia messaging service center (“MMSC”) receives and stores a multimedia message (“MMS”). ‘870 patent, at 6:14-16. The MMS may contain pictures, text, or video, and is addressed to an RFC822 (i.e., e-mail) address, in the standard form name@domain. ‘870 patent, at 6:47-61. Alternatively, the message may be addressed to a phone number, which is then converted by the MMSC to a corresponding e-mail address. ‘870 patent, at 6:62-64. In the preferred embodiment, the MMSC is located outside the General Packet Radio Service (“GPRS”) system of the Global System for Communications (“GSM.”). ‘870 patent, at 6:65-66.
2. The MMSC maps the RFC822 address to a different address called an MMS-ID, which the patent describes as an identifier that is “external” to the cellular network. ‘870 patent, at 7:10-22.
3. The MMSC sends an inquiry into the GPRS to a server called the Gateway GPRS Support Node (“GGSN”) “to determine the readiness of the wireless terminal to receive data.” ‘870 patent, at 8:9-12.
4. The GGSN maps the MMS-ID to a corresponding international mobile subscriber identity (“IMSI”) that is specific to a subscriber identity module (“SIM”) card in the wireless terminal. ‘870 patent, at 8:22-25. The GGSN performs the mapping by “inquiring about the IMSI . . . that corresponds to [the] MMS-ID from [a] database, in which the correspondences between the MMS-ID and the IMSI code of the wireless terminal are stored.” ‘870 patent, at 8:25-29.
5. The GGSN uses the IMSI to search its database to determine if the wireless terminal is currently connected to it. ‘870 patent, at 8:31-35. If so, the GGSN (1) retrieves from the database the current dynamic network address of the wireless terminal, and (2) determines whether the wireless terminal is ready to receive the multimedia message. ‘870 patent, at 8:35-39. If the desired wireless terminal is not connected to the GGSN, the GGSN inquires of another GPRS element, the home location register (“HLR”), for the identity of the GGSN to which the wireless terminal is connected, if any, and requests the information from that GGSN. ‘870 patent, at 8:66-9:6, 9:47-51.
6. The ultimate result of the process, regardless of the result of step 5, is that the GGSN sends a response message to the MMSC consisting of the information retrieved regarding the wireless terminal-viz. the status of the wireless terminal including its dynamic network address and current GGSN-and preferably including the MMS-ID, the external identifier used in the request. ‘870 patent, at 10:14-28.
7. The MMSC then sends the message to the wireless terminal at its dynamically assigned network address through the cellular network in packet-switched mode. ‘870 patent, at 11:7-10.

Comcast v. Sprint II, 203 F.Supp.3d at 510-11.

         Comcast asserted Claims 1, 7, and 113 of the ‘870 patent against Sprint. For purposes of the present Motions, only the limitations of Claim 113 are relevant. Claim 113 depends on Claim 112-i.e., Claim 113 incorporates by reference all of Claim 112's limitations, and adds additional restrictions. Claim 112, which was not asserted, claims:

A method for inquiring about information relating to a wireless terminal of a cellular network, from the cellular network by a messaging server external to the cellular network, wherein the method comprises:
[1] sending an inquiry from the messaging server to the cellular network to determine said information relating to the terminal, the inquiry comprising a first identifier identifying said terminal, the first identifier being a specific identifier external to the cellular network;
[2] mapping said first identifier to a specific second identifier in the cellular network, the second identifier being an internal identifier of the cellular network, wherein the mapping is not performed by a Home Location Register;
[3] determining said information relating to the terminal with the aid of said second identifier;
[4] sending a response message in response to said inquiry from the cellular network to said messaging server external to the cellular network, in which response message the information relating to said terminal is indicated with the aid of said first identifier.

         Claim 113 adds the additional limitation that, in the third step, the determining is performed by the same network element to which the initial inquiry is sent in the first step.

         A jury trial on Comcast's claims for infringement of Claims 1, 7, and 113 of the ‘870 patent began on January 30, 2017. Following a 14-day trial, on February 17, 2017, the jury returned a verdict, finding that Sprint had infringed all three asserted Claims of the ‘870 patent. The jury further found that Claims 1 and 7 of the ‘870 patent were valid as not anticipated and not obvious, and that Claim 113 was not anticipated, but that it was obvious and therefore invalid. The jury awarded Comcast a royalty of $1, 500, 000, in the form of a one-time lump sum for the life of the ‘870 patent, for infringement of Claims 1 and 7. The Court entered judgment on February 21, 2017.

         Presently before the Court are Comcast's Renewed Motion for Judgment as a Matter of Law that Claim 113 of the ‘870 Patent is Not Obvious, Sprint's Renewed Motion for Judgment as a Matter of Law Under Rule 50, Comcast's Motion for New Trial on Damages, and Comcast's Motion to Amend Final Judgment to Add Pre-Judgment Interest and Post-Judgment Interest. The Court disposes of the Motions as set forth below.

         II. RENEWED MOTIONS FOR JUDGMENT AS A MATTER OF LAW

         A. Standard of Review

         Federal Rule of Civil Procedure 50(a) provides that after “a party has been fully heard on an issue during a jury trial, ” a district court may grant judgment as a matter of law (“JMOL”) if “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). During trial, both Sprint and Comcast moved for JMOL under Rule 50(a), and the Court denied both Motions. See Trial Tr. (Feb. 14, 2017, afternoon) 193:21-200:19; Trial Tr. (Feb. 14, 2017, evening) 3:24-17:9.

         “If the court does not grant a motion for judgment as a matter of law made under Rule 50(a) . . . the movant may file a renewed motion for judgment as a matter of law.” Fed.R.Civ.P. 50(b). “To succeed on a renewed motion for JMOL following a jury trial and verdict, the movant ‘must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied [by] the jury's verdict cannot in law be supported by those findings.'” Comaper Corp. v. Antec, Inc., 867 F.Supp.2d 663, 667 (E.D. Pa. 2012) (quoting Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir. 1998)), rev'd on other grounds, 539 F. App'x 1000 (Fed. Cir. 2013). “[W]here there is a black box [i.e., general] jury verdict, as is the case here, we presume the jury resolved underlying factual disputes in favor of the verdict winner and leave those presumed findings undisturbed if supported by substantial evidence.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1047 (Fed. Cir. 2016). “‘Substantial' evidence is such relevant evidence from the record taken as a whole as might be accepted by a reasonable mind as adequate to support the finding under review.” Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed. Cir. 1984).

         B. Comcast's Renewed Motion for Judgment as a Matter of Law That Claim 113 of the ‘870 Patent is Not Obvious

         At trial, Sprint's expert Dr. Nathaniel Polish opined that Claims 1, 7, and 113 of the ‘870 patent were anticipated by PCT Publication No. WO 99/29125 (“Sonera”). In the alternative, Dr. Polish opined that the asserted claims were invalid as obvious based on two theories: (a) the combination of Sonera and PCT Publication No. WO 99/27722 (“Vuoristo”), and (b) the modification of Sonera based on the knowledge of a person having ordinary skill in the art (“skilled artisan”). The jury determined that Claim 113 was not anticipated, but that it was obvious and therefore invalid. However, because the verdict sheet did not include special interrogatories, it is not clear whether the jury determination that Claim 113 was obvious was based on the combination of Sonera and Vuoristo, Sonera as modified based on the knowledge of a skilled artisan, or both theories.

         Comcast asks this Court to reverse the jury determination that Claim 113 was obvious. Comcast's Mem. of Law in Supp. of its Renewed Mot. for Judgment as a Matter of Law that Claim 113 of the ‘870 Patent is Not Obvious (“Comcast JMOL”). Comcast argues (1) that there was no substantial evidence that four limitations of Claim 113 existed in the combined prior art, and (2) that there was no substantial evidence that a skilled artisan would have been motivated to combine the prior art with a reasonable expectation of success. Id. at 10, 13, 17, 23, 27. For the reasons set forth below, the Court concludes that there is substantial evidence that each of the four limitations were disclosed by the combined prior art, but there is no substantial evidence of a motivation to combine the prior art with a reasonable expectation of success. Accordingly, the Court grants Comcast's Motion for JMOL.

         1. Applicable Law

         An invention is not patent-eligible “if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time of the invention was made to a person having ordinary skill in the art to which the subject matter pertains” (a “skilled artisan”). 35 U.S.C. § 103 (2000). In other words, to be patent-eligible, an invention must not have been obvious to a skilled artisan at the time of invention. “Whether a patent is invalid as obvious is ultimately a determination of law based on underlying determinations of fact.” Geo. M. Martin Co. v. All. Mach. Sys. Int'l LLC, 618 F.3d 1294, 1300 (Fed. Cir. 2010). The Federal Circuit instructs that a legal determination of obviousness must be based on four factual inquiries: “1) the scope and content of the prior art; 2) the level of ordinary skill in the art; 3) the differences between the claimed invention and the prior art; and 4) secondary considerations of nonobviousness . . . .” Ruiz v. A.B. Chance Co., 234 F.3d 654, 662-63 (Fed. Cir. 2000) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).

         “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, “[a] party seeking to invalidate a patent on obviousness grounds must demonstrate by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” InTouch Techs., Inc. v. VGO Commc'ns, Inc., 751 F.3d 1327, 1347 (Fed. Cir. 2014). The Supreme Court of the United States has cautioned that this analysis, known as the “teaching, suggestion, or motivation” test, must be “expansive and flexible, ” and not “rigid.” KSR, 550 U.S. at 407, 415, 419. “In appropriate circumstances, a single prior art reference can render a claim obvious. However, there must be a showing of a suggestion or motivation to modify the teachings of that reference to the claimed invention in order to support the obviousness conclusion.” IGT v. Bally Gaming Int'l, Inc., 610 F.Supp.2d 288, 320 (D. Del. 2009) (quoting SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000)), aff'd, 659 F.3d 1109 (Fed. Cir. 2011). The obviousness analysis must focus on the knowledge and motivations of the skilled artisan at the time of the invention. InTouch Techs., 751 F.3d at 1348.

         The jury was instructed on obviousness. Trial Tr. (Feb. 16, 2017) at 155:12-157:10. After the Court instructed the jury, the Court convened a side bar so the parties could raise objections to the instructions. The sole objection to the obviousness instruction, from Sprint, overruled by the Court and not relevant to the issues presented in Comcast's Motion for JMOL, was that it should have incorporated the American Intellectual Property Law Association's Model Jury Instruction 5.3, which instructs the jury that “the higher the level of ordinary skill, the easier it may be to establish obviousness.” Trial Tr. (Feb. 16, 2017) at 175:10-176:11. The Court specifically asked the parties whether the obviousness instruction adequately conveyed the requirements that “there would have to be a reason for combining the two [pieces of prior art].” Trial Tr. (Feb. 16, 2017) at 176:13-177:4. The Court then instructed the parties to “think about” whether the obviousness instruction was “broad enough to cover the case, ” and both Sprint and Comcast stated that they would do so. Trial Tr. (Feb. 16, 2017) at 184:11-185:5. The following morning, before the jury began deliberating, Sprint reported that “the obviousness charge as given is fine” to cover the issue raised by the Court, and Comcast reported that it was “fine with the [obviousness] instruction.” Trial Tr. (Feb. 17, 2017, morning) at 3:5-4:20.

         2. Substantial Evidence that the Challenged Limitations Existed in the Prior Art

         Comcast argues that there is no substantial evidence that the prior art disclosed four of the limitations of Claim 113: (1) the “said first identifier” limitation, (2) the “same element” limitation, (3) an external messaging server, and (4) a “mapping” step not performed by a Home Location Register (“HLR”). For the reasons discussed below, the Court disagrees, and concludes that there was substantial evidence that these four limitations were disclosed in the prior art.

         a. The “said first identifier” limitation of Claim 113

         To begin, Comcast argues that there is no substantial evidence that prior art disclosed Claim 113's requirement that “the information relating to said terminal is indicated with the aid of said first identifier.” Comcast JMOL at 10. Claim 113, through step four of Claim 112, requires that the cellular network send a response message, including certain information about the subscriber's terminal, or cell phone, to the messaging server. In the response message, the information about the cell phone is “indicated with the aid of said first identifier” (the “said first identifier” limitation). The Court construed “with the aid of said first identifier” to mean “with the aid of the first identifier, where the first identifier may, but need not be, included in the response message, ” and the jury was so instructed. Trial Tr. (Feb. 16, 2017) at 151:20-23. In short, this limitation is satisfied if the first identifier aids in the method described in Claim 113 in any way. See Comcast v. Sprint II, 203 F.Supp.3d at ...


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