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Northbrook Digital Corp. v. Browster, Inc.: US District Court : PATENT - inventor's opinion and claim chart prima facie evidence of infringement; summary judgment

Northbrook Digital
Civil No. 06‐4206
Browster, Inc.,
Peter M. Lancaster and Devan V. Padmanabhan, Dorsey & Whitney LLP
for and on behalf of Plaintiff.
William L. Roberts and Kevin P. Wagner, Faegre & Benson LLP for and on
behalf of Defendant.
This matter is before the Court on Plaintiff Northbrook Digital
Corporation’s (“Northbrook”) motion for partial summary judgment as to its
claims of patent infringement.
1. Background
Defendant Browster, Inc. (“Browster”) is a defunct company that was
created in early 2005 to develop and market enhanced Internet browsing
software. One of the features of the earlier versions of its software was
“prefetching” of web content. Prefetching is a process which involves delivering
web page content to a computer’s storage before the user specifically requests
that the content of particular pages be made available. It is Northbrook’s
position that prefetching is a feature that is covered by United States Patent Nos.
5,715,445, 5,946,682, 6,301,576, 6,604,103 and 7,103,594. In its Complaint,
Northbrook alleges that Browster willfully infringed these patents.
2. Discovery
Pursuant to the Pretrial Scheduling Order (“PSO”) issued in this case [Doc
No. 12], Northbrook served a detailed claim chart which explained why
Browster’s software infringed multiple claims of Northbrook’s patents. Wolfe
Decl., Ex. A. Browster was to submit its own claim chart no later than June 1,
2007, in which Browster was to
indicate[] with specificity which elements on Plaintiff’s Claim Chart it
admits are present in the accused device . . . and which it contends are
absent. In the latter regard, Defendant will set forth in detail the basis for a
contention that the element is absent . . . Defendant shall explain in detail
any other grounds for asserting invalidity of the claims identified in
Plaintiffs’ Claim Chart including but not limited to any invalidity
contentions based on 35 U.S.C. § 191 and/or § 112.
PSO at 4.
Browster did not submit such a claim chart. The PSO also provided that by
June 15, 2007, Browster was to submit a list of prior art on which it relies, but
Browster failed to submit such a list as well. In addition, Northbrook deposed
the founder and CEO of Browster and the inventor of Browster’s browsing
software, Scott Milener. Northbrook asserts that during the deposition, Milener
was given many opportunities to explain why his software did not infringe the
patents in suit, but Milener was either unable or unwilling to do so. See
Lancaster Decl., Ex. A., Milener Dep. 225‐30.
3. Standard for Summary Judgment
Summary judgment is appropriate if, viewing all facts in the light most
favorable to the non‐moving party, there is no genuine issue as to any material
fact, and the moving party is entitled to judgment as a matter of law. Fed. R. Civ.
P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322‐23 (1986). The party seeking
summary judgment bears the burden of showing that there is no disputed issue
of material fact. Celotex, 477 U.S. at 323. This burden can be met “by ‘showing’ ‐
that is , pointing out to the district court ‐ that there is an absence of evidence to
support the nonmoving party’s case.” Id. at 325. The party opposing summary
judgment may not rest upon mere allegations or denials, but must set forth
specific facts showing that there is a genuine issue for trial. Krenik v. County of
Le Sueur, 47 F.3d 953, 957 (8th Cir.1995).
4. Analysis
Northbrook asserts that it is entitled to summary judgment establishing
that Browster’s software infringes certain identified claims of the patents in suit
given Browster’s failure to timely articulate any basis for noninfringement or
invalidity. Browster responds that despite its failure to produce affirmative
evidence of noninfringement or invalidity, Northbrook is not entitled to
summary judgment unless it has proven, by a preponderance of the evidence,
that Browster’s accused product infringes the patent claims at issue. Browster
asserts that Northbrook’s motion must be denied as it did not meet its burden.
A. Validity
As a preliminary matter, the Court finds that Browster is not challenging
the validity of the patents at issue. Accordingly, the Court finds that said patents
are valid.
B. Infringement
The determination of patent infringement involves a two step analysis.
Transclean Corp.v. Bridgewood Serv., Inc., 290 F.3d 1364, 1370 (Fed. Cir. 2002).
The Court must first determine the scope and meaning of the patent claims
asserted. Id. Next, the Court compares the properly construed claims against the
accused device. Id. Claim construction is a matter of law, while infringement
involves questions of fact. Id.
Words in a claim are generally given their ordinary and customary
meaning as to one skilled in the art in question at the time of the invention.
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005). “In some cases, the
ordinary meaning of claim language as understood by a person of skill in the art
may be readily apparent even to lay judges, and claim construction in such cases
involves little more than the application of the widely accepted meaning of
commonly understood words.” Id. at 1314.
Northbrook asserts that Browster has not identified any contested claims,
therefore the claims terms should be given their ordinary meaning. Browster
responds that the Court cannot construe the relevant claim terms because
Northbrook has not presented the Court with any evidence as to the ordinary
meaning of the claims terms from the perspective of one skilled in the art.
Browster further asserts that despite Northbrook’s assertions to the contrary,
there are several claim construction issues that must be resolved before the Court
1Northbrook timely disclosed to Browster that Wolfe would be providing opinion
testimony on the issues of validity and infringement. Second Lancaster Decl., Ex. A, p. 4.
can find infringement. For example, the asserted claims of the ‘445 patent relate
to a system for retrieving “documents” and to a “many‐user database.” These
terms must be construed to determine whether they encompass the Internet web
pages that are accessed by the Browster software.
First, the Court notes that there is no affirmative duty to produce evidence
supporting a claim construction that is consistent with the ordinary meaning of
commonly understood words. Second, although Browster now challenges the
construction of “many‐user database” and “document”, Browster did not
provide the Court what it believes to be the proper construction of such claim
terms, or point to evidence which suggests the terms should be construed in a
manner inconsistent with the terms’ ordinary meaning. Accordingly, the Court
will construe the claim terms according to their commonly understood meaning.
The next step in the infringement analysis requires the Court to compare
the accused product to the properly construed claims. In support of its motion
for summary judgment, Northbrook submitted the declaration of Mark Wolfe1,
who is the inventor of the patents at issue. In his declaration, Wolfe states his
belief that the patents at issue have been infringed by Browster “in the manner
described in Exhibit A.” Wolfe Decl., ¶ 3. Exhibit A is Northbrook’s claim chart.
In the Claim Chart, Northbrook has listed the claims of the patents in suit in the
left column, and in the right column has explained why Browster’s software
infringes the corresponding claim.
Northbrook also points out that in his deposition, Scott Milener did not
provide any testimony to support a defense of noninfringement. Northbrook
thus argues that the Claim Chart, together with a lack of evidence supporting
noninfringement, supports summary judgment on the issue of infringement.
Browster asserts that generally, claims of infringement are proven through
expert testimony, published materials relating to the accused product and an
analysis of the accused products themselves, and that Northbrook has not
submitted any evidence of this kind. Browster asserts that the only evidence
submitted by Northbrook ‐ the Wolfe Declaration and the Claim Chart ‐ do not
sufficiently demonstrate infringement as the Claim Chart is only a summary
comparison, and is not supported by sufficient evidence. The Court disagrees.
First, the Claim Chart is adopted by the inventor of the patents in suit,
Mark Wolfe. As the inventor, Wolfe may qualify as an expert, and provide
testimony as to the meaning of the claims at issue. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 991 (Fed. Cir. 1995). Second, each limitation of the
claims is spelled out in the Claim Chart, with a corresponding explanation of
how such limitation is met by Browster’s software. For example, with respect to
the ‘445 patent, claim 1 includes a limitation that the claimed system deletes from
memory the portion of the third document stored in the memory unit. Wolfe
Decl., Ex. A, p. 3 (second box from bottom of page). The Claim Chart then
explains that this limitation is met by Browster’s software.
The computer deletes from the memory unit the portion of the third web
page. See, e.g., B000099 (Browster “[m]anage[s] cache of prefetched pages
within memory budget.”) and B000263 (“Browster’s prefetch component
“will also provide APIs to force the expiration (or purging) of cache
contents . . .
In addition to the Wolfe Declaration and the Claim Chart, the record also
consists of the patents in suit, the deposition transcript of Scott Milener, Browster
marketing materials and Browster’s answers to Northbrook’s First Set of
Interrogatories. The Court thus finds that Northbrook has put forth sufficient
evidence to support a prima facie claim of infringement, and has demonstrated
that there is an absence of evidence to support noninfringement.
In its opposition brief, Browster “acknowledges its decision to forego
presenting affirmative evidence of non‐infringement, and is prepared to live with
the inability to present such evidence in opposition to this motion.” Browster
Memorandum in Opposition to Plaintiff’s Motion for Partial Summary Judgment,
p. 1‐2. Clearly, Browster knew that one of the consequences of its litigation
strategy was that Northbrook could meet its burden on summary judgment.
Other courts have addressed similar circumstances, where a party took the risk
that its opponent could not successfully prove its case, and lost.
For example, in Symbol Tech., Inc. v. Opticon, Inc., the defendant had
challenged the plaintiff’s prima facie case of patent infringement, arguing that
plaintiff’s expert provided an opinion as to the ultimate issue of infringement,
without discussing in detail the underlying bases for such opinion. 935 F.2d
1569, 1575 (Fed. Cir. 1991). The Federal Circuit rejected this challenge, finding
that “testimony on the ultimate issue of infringement is permissible in patent
cases.” Id. The Court noted that the defendant had the opportunity to
demonstrate that the expert’s testimony was factually incorrect, but failed to take
such opportunity. Id. at 1576.
In short, [plaintiff] was permitted to rest its prima facie case on [the]
expert[‘s] testimony, including charts, that the patents were infringed, and
the District Court was free to accept or reject that evidence. Of course, by
resting its case on summary testimony, [plaintiff] was left exposed to a
profound risk that [defendant], during its defense or cross‐examination of
[the expert], would demonstrate that the accused devices were noninfringing
under a different and proper construction of the claims.
[Defendant] willingly permitted [plaintiff] to bear this risk, but chose not to
expose [the expert’s] testimony to the glaring light of cross‐examination on
this issue. Having lost below, [defendant] cannot here recoup for its failed
litigation strategy.
Id. See also, Transclean, 290 F.3d at 1374 (affirming district court’s grant of
summary judgment where plaintiff had presented evidence sufficient to show
infringement, and defendant was precluded from arguing noninfringement as a
discovery sanction for failure to respond to interrogatories).
1. Northbrook Digital Corporation’s Motion for Partial Summary
Judgment [Doc. No. 14] is GRANTED. Claims 1, 3 and 4 of the ‘445
patent; claims 4‐13 of the ‘682 patent; claims 2‐4 of the ‘576 patent;
claims 1,2, and 4 of the ‘103 patent; and claims 1‐8, 10, 12‐15, 17‐22,
and 26‐29 of the ‘594 patent are not invalid and are infringed.
2The Court did not take into consideration the Second Declaration of Mark Wolfe.
2. Browster, Inc.’s Motion to Strike [Doc. No. 36] is DENIED AS
Date: February 13, 2008
s / Michael J. Davis
Michael J. Davis
United States District Court
Civil No. 06‐4206


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