Corning Optical Communications Wireless Ltd. v. Solid, Inc. et al, No. 5:2014cv03750 - Document 385 (N.D. Cal. 2015)
Court Description: ORDER DENYING MOTION FOR RECONSIDERATION OF SUMMARY JUDGMENT ORDER re 356 . Signed by Judge Paul S. Grewal on September 28, 2015 (psglc2, COURT STAFF) (Filed on 9/28/2015)
Download PDF
<![CDATA[
Corning Optical Communications Wireless Ltd. v. Solid, Inc. et al Doc. 385 1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 NORTHERN DISTRICT OF CALIFORNIA 8 SAN JOSE DIVISION 9 United States District Court For the Northern District of California 10 11 CORNING OPTICAL COMMUNICATIONS WIRELESS LTD., 12 Plaintiff, 13 14 v. SOLID, INC., et al., 15 Defendants. 16 19 20 (Re: Docket No. 356) 1842, it appears no appellate court has considered exactly what it takes to trigger that requirement by making, selling, offering to sell or importing. Meanwhile, this marks the undersigned’s second opportunity in less than a week. The reason for this spate of Section 287(a) 2 statutory consideration is a motion for 22 24 ORDER DENYING MOTION FOR RECONSIDERATION OF SUMMARY JUDGMENT ORDER consider this: John Tyler was the President who signed it into law. 1 And yet in the years since 21 23 Case No. 5:14-cv-03750-PSG To appreciate how long our nation’s patent laws have included a marking requirement, 17 18 ) ) ) ) ) ) ) ) ) ) ) reconsideration by Plaintiff Corning Optical Communications Wireless Ltd. Corning asks the court to revisit its recent order granting summary judgment to Defendants SOLiD, Inc. and Reach 25 26 1 See Act of Aug. 29, 1842, ch. 263, § 6, 5 Stat. 543, 544-45 (1842). 27 2 35 U.S.C. § 287(a). 28 1 Case No. 5:14-cv-03750-PSG ORDER DENYING MOTION FOR RECONSIDERATION OF SUMMARY JUDGMENT ORDER Dockets.Justia.com 1 Holdings LLC on the issue of pre-suit damages. 3 The court held that no reasonable jury could find 2 that Corning marked its products or otherwise complied with Section 287(a), and that there is no 3 genuine dispute that that Corning’s pre-suit damages claim required compliance because Corning 4 imported patented articles into the United States. More specifically, Corning asks that the court 5 reconsider its holding that there is no genuine dispute that Section 287(a) applies to Corning’s 6 claims in this case. 4 For the reasons below, the court DENIES Corning’s motion. In their original motion, Defendants produced unrebutted evidence, in the form of a transfer 7 8 pricing analysis and the deposition of Corning’s Rule 30(b)(6) witness on the topic, of a typical 9 transaction under Corning’s arrangement with its American parent company. 5 A sale of an accused United States District Court For the Northern District of California 10 distributed antenna system to an American end customer starts with the customer issuing a 11 purchase order to Corning’s American parent. 6 The parent company then issues a purchase order 12 to Corning, and Corning in turn issues another purchase order to a third-party manufacturer. 7 The 13 manufacturer ships the product directly to the end customer in the United States. 8 Corning takes 14 title to a product when it leaves the manufacturer and retains it until it reaches the end customer. 9 15 Immediately before title transfers to the customer, Corning’s American parent takes “flash title,” 16 temporary legal ownership that lasts only a split second. 10 17 18 3 19 See Docket No. 347; Docket No. 356. 4 20 21 See Docket No. 347 at 8-9; Docket No. 356. Corning does not seek reconsideration of the portion of the court’s order holding that no reasonable jury could find that Corning marked its products or provided actual notice to Defendants of their infringement. See Docket No. 347 at 8-9. 5 22 Corning, the plaintiff here, is headquartered in Israel, but its parent company, which is not a party to this suit, is based in Virginia. See Docket No. 258-66 at 11-12. 23 6 See Docket No. 258-26 at 20:7-22; Docket No. 258-66 at 19. 24 7 See Docket No. 258-26 at 20:25-21:2, 21:17-22:3; Docket No. 258-66 at 19. 25 8 See Docket No. 258-26 at 21:17-22:3; Docket No. 258-66 at 19. 26 9 See Docket No. 258-26 at 22:16-23:6, 25:13-26:15; Docket No. 258-66 at 19. 27 10 28 See Docket No. 258-26 at 25:13-26:15; Docket No. 258-66 at 19. 2 Case No. 5:14-cv-03750-PSG ORDER DENYING MOTION FOR RECONSIDERATION OF SUMMARY JUDGMENT ORDER Corning now argues that, under these facts, it is the American parent, and not the plaintiff 1 2 and patentee, that imports DAS products practicing the ’837 patent. It argues further that the court 3 erred in finding that the evidence above indisputably shows that Corning, and not its parent, made 4 these sales in the United States. As for importation, Corning says the court did not mention that 5 possibility in its order, and Defendants did not satisfy their burden of proving that no reasonable 6 juror could find that Corning imported products into the United States. 7 As the court and the parties have found, there is very little case law addressing what factors 8 determine whether an entity has imported or sold a product here for the purposes of Section 287(a). 9 But the Federal Circuit has provided substantial guidance on the interpretation of the corresponding United States District Court For the Northern District of California 10 terms in 35 U.S.C. § 271(a). 11 Unless there is reason to believe otherwise, courts generally 11 presume that words carry the same meaning when they appear in different sections of the same 12 statute. 12 Deferring to this canon, the court must look to the precedent on Section 271(a) as 13 instructive on the issue of how to interpret Section 287(a). 14 After reviewing this precedent and the undisputed facts submitted on summary judgment, 15 the court is unpersuaded to reconsider its earlier ruling. For at least a substantial percentage of its 16 transactions, the plaintiff patentee holds legal title to its DAS products until a split second before 17 they reach their end customers in the United States. Nothing Corning properly submits suggests 18 otherwise. In Nuance Communications, a foreign company sent software products accused of 19 infringing a patent to a related American company for distribution in the United States. 13 The 20 foreign company retained ownership of the products even after they entered the United States. 14 21 Under these facts, the Federal Circuit held that the foreign company imported these products under 22 11 23 24 See, e.g., Carnegie Mellon Univ. v. Marvell Tech. Group, Ltd., Case No. 2014-1492, 2015 WL 4639309, at *21 (Fed. Cir. Aug. 4, 2015); Nuance Commc’ns v. Abbyy Software House, 626 F.3d 1222, 1233 (Fed. Cir. 2010); MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1376-77 (Fed. Cir. 2005). 25 12 See Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351, 1362 (2013). 26 13 See 626 F.3d at 1228-29, 1233. 27 14 See id. at 1233. 28 3 Case No. 5:14-cv-03750-PSG ORDER DENYING MOTION FOR RECONSIDERATION OF SUMMARY JUDGMENT ORDER 1 Section 271(a). 15 Similarly, in Largan Precision Co. v. Genius Electronic Optical Co., a foreign 2 company shipped samples of its allegedly infringing products directly into the United States. 16 The 3 district court relied in part on the fact that title transferred in the United States in finding that this 4 constituted importation into the United States under Section 271(a). 17 It is undisputed that Corning 5 ships products into the United States, and in fact ships them directly to the end customers who 6 ordered them from Corning’s American parent. Corning therefore imports these products into the 7 United States, and it was required to mark them under Section 287(a). At the hearing on the motion for reconsideration, Corning presented the court with a United 8 9 States customs declaration averring that Corning’s American parent imported DAS products, not United States District Court For the Northern District of California 10 Corning. The customs declaration does not change the finding above. First of all, Defendants 11 point out, without any challenge by Corning, that Corning has never produced this document in 12 discovery, much less presented it in opposition to the motion for summary judgment or at the 13 hearing on that motion. Even if the court were to consider it as evidence, it would only show that 14 Corning’s American parent was listed as the importer for one shipment of goods—and that too 15 under trade law and not patent law. It does not contradict the remainder of the evidence, both from 16 the transfer pricing analysis and from deposition testimony, that the bulk of Corning’s sales fit the 17 pattern described above. Corning’s sales also occur in the United States. Again, the fact that legal title passes 18 19 buttresses that conclusion, even if it is not the entire inquiry. In the context of Section 271(a), the 20 Federal Circuit has held that “the location of a ‘sale’ . . . is not necessarily where legal title 21 passes.” 18 Factors relevant to the location of a sale under Section 271(a) include where the title 22 transfer took place, the terms of the sale agreement, where the parties formed that agreement, the 23 24 15 See id. 25 16 See Case No. 13-cv-02502, 2015 WL 1476902, at *6-7 (N.D. Cal. Mar. 31, 2015). 26 17 See id. at *7. 27 18 MEMC, 420 F.3d at 1377. 28 4 Case No. 5:14-cv-03750-PSG ORDER DENYING MOTION FOR RECONSIDERATION OF SUMMARY JUDGMENT ORDER 1 location of delivery and where payment occurred. 19 Here, the purchase orders from the end 2 customer came from the United States. So did the purchase order to Corning. Corning therefore 3 sold the products to an American parent for distribution to American end customers. Finally, 4 payment went from the United States to Corning according to a transfer pricing arrangement. This is far different from the situations in MEMC and Halo Electronics. In MEMC, the 5 6 defendant, SUMCO, manufactured the accused products overseas in response to a purchase order 7 from a foreign company, Samsung Japan. 20 The products only entered the United States when 8 Samsung Japan sent the products, using a third-party shipper, to its sibling company here. 21 9 Samsung Japan paid SUMCO for the wafers after they were delivered. 22 Similarly, in Halo United States District Court For the Northern District of California 10 Electronics, the relevant products “were manufactured, shipped, and delivered to buyers abroad.” 23 11 The accused infringer received purchase orders and payments from contract manufacturers based 12 overseas, so that the two parties agreeing to the sale contract were both foreign entities. 24 The only 13 connection with the United States was that “pricing negotiations and certain contracting and 14 marketing activities” occurred here. 25 The products never entered the United States, even in 15 transit. 26 By contrast, the sales at issue here involved an American party, and Corning delivered 16 the products to the United States. Considering all the circumstances of these sales, there is no 17 genuine dispute that they occurred in the United States. 18 SO ORDERED. 19 19 20 See Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371, 1379 (Fed. Cir. 2014); see also Carnegie Mellon, 2015 WL 4639309, at *21. 20 See MEMC, 420 F.3d at 1376-77. 21 See id. 22 See id. at 1377. 23 769 F.3d at 1379. 24 See id. 25 Id. 21 22 23 24 25 26 26 27 28 See id. (citing Halo Elecs., Inc. v. Pulse Eng’g, Inc., 810 F. Supp. 2d 1173, 1207 (D. Nev. 2011)). 5 Case No. 5:14-cv-03750-PSG ORDER DENYING MOTION FOR RECONSIDERATION OF SUMMARY JUDGMENT ORDER
]]>
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You
should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
