Virginia Innovation Sciences, Inc. v. Samsung Electronics Co. (983 F. Supp. 2d 713, 2014)

OPINION AND ORDER

MARK S. DAVIS, District Judge.

This matter is currently before the Court on a motion for summary judgment filed by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively “Samsung” or “Defendants”). ECF No. 134. The motion has been fully briefed and is therefore ripe for decision.

After examination of the briefs and the record, the Court determines that a hearing is unnecessary, as the facts and legal arguments are adequately presented, and the decisional process would not be aided significantly by oral argument. See Fed. R.Civ.P. 78(b); E.D. Va. Loc. Civ. R. 7(J). For the reasons that follow, Defendants’ motion seeking summary judgment is GRANTED, in part, and DENIED, in part.

I. FACTUAL BACKGROUND

At issue in this case are five patents: U.S. Patent No. 7,899,492 (“the '492 patent”), U.S. Patent No. 8,050,711 (“the '711 patent”), U.S. Patent No. 8,145,268 (“the '268 patent”), U.S. Patent No. 8,224,381 (“the '381 patent”), and U.S. Patent No. 8,135,398 (“the '398 patent”). All of the patents-in-suit claim priority to the '492 patent, which itself claimed priority to provisional application number 60/588,359, filed on July 16, 2004. The '711, '268, and '381 patents are continuations of the '492 patent and all four share a substantively identical specification (“the '492 specification”). U.S. Patent No. 7,957,733 (“the '733 patent”), which is not at issue in this case, was filed on May 22, 2007 as a continuation-in-part of the '492 patent. The '398 patent is a continuation from the '733 patent. The shared specification of the '733 and '398 patents (“the '398 specification”) includes all of the '492 specification along with additional material. It is the addition of this new material which prevents the '398 patent from claiming priority back to the filing of the '492 patent and entitles it to the later priority date of May 22, 2007, the filing date of the '733 patent. Each of the patents-in-suit describes inventions intended to resolve the inconvenience and impracticability of viewing multimedia content on the small screens of mobile terminals.

A. The '492 Patent Family

The '492, '711, '268, and '381 patents (collectively, “the '492 patent family”) are each titled “Methods, Systems and Apparatus for Displaying Multimedia Information from Wireless Communication Networks.” Their shared specification and respective claims are directed toward methods, systems, apparatuses, and computer-readable mediums that can be utilized to convert multimedia signals, appropriate for displaying content on a mobile terminal, into signals appropriate for display on an alternative display terminal,

B. The '398 Patent

The '398 patent is entitled “Methods and Apparatus for Multimedia Communications with Different User Terminals.” Its specification and claims are directed toward methods, systems, apparatuses, computer programs, and computer-readable mediums for providing “multimedia content to and from various different devices” through the conversion and sending or routing of such content. E.g., '398 patent 1:47-49. As noted above, the '398 patent issued from a continuation of the '733 patent, which was itself a continuation-in-part of the '492 patent. Id. at 1:21-31. Thus, the '398 patent claims priority to the filing date of the '733 patent, May 22, 2007. However, it may claim priority back to the filing date of the '492 patent for claims the subject matter of which flow directly from the '492 patent. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed. Cir.2008) (“In essence, [35 U.S.C. § 120] means that in a chain of continuing applications, a claim in a later application receives the benefit of the filing date of an earlier application so long as the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, ¶ 1, including the written description requirement, with respect to that claim.”); see also, Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330, 1334 (Fed.Cir.2011).

II. PROCEDURAL HISTORY

In the instant patent infringement action, plaintiff Virginia Innovation Sciences, Inc. (hereinafter “Plaintiff” or “VIS”) alleges that Defendants have directly, indirectly, and willfully infringed the patents-in-suit by making, using, offering for sale, selling, and/or importing a wide range of accused products, including smartphones, tablets, Blue-ray players, and hubs. Samsung denies VIS’s claims of infringement and asserts several affirmative defenses, including invalidity of all patents-in-suit, prosecution history estoppel and other equitable doctrines. Additionally, Samsung asserts counterclaims seeking declarations of non-infringement and invalidity for each of the patents-in-suit.

The Court held its Markman hearing in this matter on June 11, 2013 and issued its Markman opinion on September 25, 2013. ECF No. 198, 976 F.Supp.2d 794 (E.D.Va. 2013). Since the Markman hearing, there have been numerous filings in this matter and several motions remain pending before the Court, in various stages of briefing. By Order of October 25, 2013, the Court joined for trial this matter and Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., Ltd., et al, Case No. 2:13cv322. ECF No. 353. The trial of the two matters is now set for April 21, 2014. On November 15, 2013 the Court ruled on Defendants’ Motion to Dismiss VIS’s Claim for Willful Infringement; granting, in part, and denying, in part such motion. ECF No. 395, 983 F.Supp.2d 700, 2013 WL 6053846 (E.D.Va.2013). The Court found that the claim for willful infringement failed to state a plausible claim for relief with regard to willful infringement of the '711, '268, and '381 patents.

After first reciting the applicable standard of review, the Court will address the Defendants’ Motion for Summary Judgment of Patent Invalidity and No Willful Infringement filed August 13, 2013 and the associated responses and briefs. ECF No. 134, 135, 144, 159, 163, and 168.

III. STANDARD OF REVIEW

A. Summary Judgment

The Federal Rules of Civil Procedure provide that a district court shall grant summary judgment in favor of a movant if such party “shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R:Civ.P. 56(a). The mere existence of some alleged factual dispute between the parties “will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.” Anderson v. Liberty Lobby Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Furthermore, the standard at summary judgment requires that the evidence be viewed in favor of the nonmovant and that all justifiable inferences be drawn in his favor. Anderson, 477 U.S. at 255, 106 S.Ct. 2505.

If a movant has properly advanced evidence supporting entry of summary judgment, the non-moving party may not rest upon the mere allegations of the pleadings, but instead must set forth specific facts in the form of exhibits and sworn statements illustrating a genuine issue for trial. Celotex Corp. v. Catrett, 477 U.S. 317, 322-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). At that point, “the judge’s function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.” Anderson, 477 U.S. at 249, 106 S.Ct. 2505. In doing so, the judge must construe the facts and all “justifiable inferences” in the light most favorable to the non-moving party, and the judge may not make credibility determinations. Id. at 255, 106 S.Ct. 2505; T-Mobile Northeast LLC v. City Council of City of Newport News, Va., 674 F.3d 380, 385 (4th Cir. 2012). “Summary judgment will not lie if the dispute about a material fact is ‘genuine,’ that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Moreover, because a ruling on summary judgment “necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits[,] ... [t]he mere existence of a scintilla of evidence in support of the plaintiffs position will be insufficient” to overcome a defendants’ well-founded summary judgment motion. Anderson, 477 U.S. at 252, 106 S.Ct. 2505.

“In rendering a decision on a motion for summary judgment, a court must ‘view the evidence presented through the prism of the substantive evidentiary burden’ that would inhere at trial.” Apple Computer, Inc. v. Articulate Sys., Inc., 234 F.3d 14, 20 (Fed.Cir.2000) (quoting Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 880 (Fed.Cir.1998) (quoting Anderson, 477 U.S. at 254, 106 S.Ct. 2505)). Therefore, the Court must now examine each applicable evidentiary burden.

B. Patent Invalidity

“Among other defenses under § 282 of the Patent Act of 1952 (1952 Act), an alleged infringer may assert the invalidity of the patent-that is, he may attempt to prove that the patent never should have issued in the first place.” Microsoft Corp. v. i4i Ltd. P’ship, — U.S.-, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011) (citing 35 U.S.C. §§ 282(2), (3)). Defendants assert the invalidity of the patents-in-suit.

A patent is presumed valid upon issuance from the United States Patent and Trademark Office. 35 U.S.C. § 282. Overcoming this presumption requires the party seeking to invalidate a patent to prove invalidity by clear and convincing evidence. i4i Ltd. P’ship, 131 S.Ct. at 2246. This same standard applies at the summary judgment stage. Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1378 (Fed.Cir.2005). Thus, in order to prevail at the summary judgment stage, the party seeking summary judgment on the issue of patent invalidity “must submit such clear and convincing evidence of invalidity so that no reasonable jury could find otherwise.” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 962 (Fed.Cir.2001); Apple Computer, Inc., 234 F.3d at 20.

Before addressing the factual questions of anticipation and obviousness, the necessary first step in considering patent Validity or invalidity is to determine the proper meaning of the relevant disputed claim terms. Akamai Techs., Inc. v. Cable & Wireless Internet Sews., Inc., 344 F.3d 1186, 1195 n. 4 (Fed.Cir.2003). As claim construction is a matter of law, Markman v. Westview, Instruments Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), summary judgment is particularly appropriate where the only real dispute between parties concerns the proper meaning of patent claims. See Voice Techs. Group, Inc. v. VMC Sys., Inc., 164 F.3d 605, 612 (Fed. Cir.1999) (considering infringement at summary judgment stage). Although Voice Techs. Group, Inc. concerns the issue of infringement at the summary judgment stage, the Federal Circuit’s reasoning is equally applicable to the issue of patent validity at the summary judgment stage.

i. Invalidity Based on Anticipation

Patent invalidity due to anticipation under 35 U.S.C. § 102 is a question of fact rather than a question of law. Enzo Bio-chem, Inc. v. Applera Corp., 599 F.3d 1325, 1331 (Fed.Cir.2010). However, “[wjhile anticipation is a question of fact, it may be decided on summary judgment if the record reveals no genuine dispute of material fact.” Enzo Biochem, Inc., 599 F.3d at 1331 (quoting Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1352 (Fed.Cir. 2008)).

“A determination that a claim is anticipated involves a two-step analysis: ‘the first step requires construing the claim,’ and ‘[t]he second step in the analysis requires a comparison of the properly construed claim to the prior art....’”

Enzo Biochem, Inc., 599 F.3d at 1332 (quoting Power Mosfet Techs., LLC v. Siemens AG, 378 F.3d 1396, 1406 (Fed.Cir. 2004)). “A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed.Cir. 2003) (citing Lewmar Marine, Inc. v. Barvent, Inc., 827 F.2d 744, 747 (Fed.Cir. 1987)). However;

[i]f the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269, 948 F.2d 1264, 20 U.S.P.Q.2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326 (C.C.P.A.1981)).

In re Robertson, 169 F.3d 743, 745 (Fed. Cir.1999).

Furthermore, “inherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure.” Schering Corp., 339 F.3d at 1377 (emphasis added) (citing “e.g., In re Cruciferous Sprout Litig., 301 F.3d 1343, 1351 (Fed. Cir.2002); MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed.Cir. 1999) (‘Where ... the result is a necessary consequence of what was deliberately intended, it is of no import that the article’s authors did not appreciate the results.’)”). Moreover, it is not necessary that the inherent disclosure was recognized by a person having ordinary skill in the art before the critical date of the patent as long as the scope of the prior art includes disclosure of the inherent feature. Schering Corp., 339 F.3d at 1377-78 (citing Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268-69 (Fed.Cir.1991)). Because “inherency, like anticipation itself, requires a determination of the meaning of the prior art,” the Court “may resolve factual questions about the subject matter in the prior art by examining the reference through the eyes of a person of ordinary skill in the art, among other sources of evidence about the meaning of the prior art.” Schering Corp., 339 F.3d at 1377.

ii. Invalidity Based on Obviousness

A patent is invalid based on obviousness “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 the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). While the obviousness inquiry is ultimately a legal determination, it is predicated on underlying factual findings that are unique to each patent case. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406-07, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). However, “a district court can properly grant, as a matter of law, a motion for summary judgment on patent invalidity when the factual inquiries into obviousness present no genuine issue of material facts.” Tokai Corp. v. Easton Enterprises, Inc., 632 F.3d 1358, 1366 (Fed.Cir.2011) (quoting Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed.Cir.1991)); accord Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567, 1571 (Fed.Cir.1984); Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 778-79 (Fed.Cir.1983).

Because a patent enjoys a statutory presumption of validity, 35 U.S.C. § 282, an alleged infringer seeking to establish that a patent is invalid as obvious must overcome the presumption of validity “by clear and convincing evidence,” Innovention Toys, LLC v. MCA Entm’t, Inc., 637 F.3d 1314, 1320 (Fed.Cir.2011). Thus, to establish a prima facie case of obviousness, the burden is on the alleged infringer to establish, by clear and convincing evidence, that a skilled artisan would have both been motivated to combine the prior art and have a reasonable expectation of success in doing so. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,1360 (Fed.Cir.2012).

The following four-factor test guides the obviousness inquiry: “(1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the art, and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved needs, and the failure of others.” Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed.Cir. 2010) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966)) (hereinafter “the Graham factors”). Indeed, the Federal Circuit has explained that courts are required to consider all four of the Graham factors prior to reaching a conclusion with respect to obviousness. In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1076-77 (Fed. Cir.2012).

C. Willful Infringement

The Federal Circuit established the current standard for willful infringement in In re Seagate, in which the Court “overrule^] the standard set out in Underwater Devices” and, in so doing, “abandoned] the affirmative duty of due care.” In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed.Cir.2007). The Federal Circuit held “that proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness,” which requires meeting a threshold objective standard and a subsequent subjective standard. Id. The threshold objective standard requires that, in order to establish willful infringement, “a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Id. “If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.” Id.

Following Seagate, the Federal Circuit “established the rule that generally the ‘objective prong of Seagate tends not to be met where an accused infringer relies on a reasonable defense to a charge of infringement.’ ” Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 682 F.3d 1003, 1005-06 (Fed.Cir.2012) cert. denied, — U.S. -, 133 S.Ct. 932, 184 L.Ed.2d 752 (2013) (quoting Spine Solutions, Inc. v. Medtronic Sofamor Danek USA Inc., 620 F.3d 1305, 1319 (Fed.Cir. 2010)).

IV. DISCUSSION

A. Invalidity of '492 Patent Family

The priority date of a patent functions as a cut-off date for what may qualify as a prior art reference. See 35 U.S.C. § 102. Where patents share a priority date, they are therefore subject to the same prior art references. Because the '492, '268, '711, and '381 patents share a common priority date, as members of the '492 patent family, they are subject to the same prior art references. It is for this reason that the Court will consider the '492, '268, '711, and '381 patents, and the prior art references asserted against them, together. However, it should be emphasized that the applicability of each prior art reference is still determined with regard to each claim individually.

As stated above, the party seeking summary judgment on the issue of patent invalidity “must submit such clear and convincing evidence of invalidity so that no reasonable jury could find otherwise.” Eli Lilly & Co., 251 F.3d at 962. However, before addressing the questions of anticipation and obviousness, the necessary first step in considering patent validity or invalidity is to determine the proper meaning of the relevant disputed claim terms. Akamai Techs., Inc., 344 F.3d at 1195 n. 4.

i. Construction of Claim Terms

The Court resolved the construction of the majority of the disputed claim terms through the issuance of its Mark-man opinion on September 25, 2013. However, a new dispute has arisen over the course of the parties’ submissions on Samsung’s Motion for Summary Judgment.

VIS asserts that decompression of the video signal is a required limitation of all of its asserted claims. PI. Virginia Innovation Sciences Inc.’s Mem. In Opp. to Defi’s Mot. for Summ. J. (“Mem. in Opp.”) at 15, ECF No. 163. More specifically, VIS asserts that the conversion from a signal format appropriate for the mobile terminal to a display format for output to the alternative display inherently requires conversion from a compressed format, e.g. the signal format, to an uncompressed format, e.g. the display format. Id. at 16. Samsung argues this assertion by VIS constitutes an argument for a different claim construction than that already determined by the Court, in its Markman Opinion, for the term “converted video signal.” Rebuttal Br. in Supp. of Samsung’s Mot. for Summ. J. (“Rebuttal Br.”) at 6-7, ECF No. 168. However, VIS’s argument is based not on the term “converted video signal,” but on the remaining language in the claims setting forth additional limitations beyond those included through the term “converted video signal” alone. Although conversion is the necessary process for obtaining the product, a “converted video signal,” there is no rule which prevents a claim from including additional limitations beyond those set forth as the baseline in the Court’s claim construction. In this case, the claim construction of the term “converted video signal” sets forth the minimum baseline regarding what must take place during the processing for the video signal to be considered “converted.” Thus, the inclusion of additional limiting language in the claims requiring the additional step of decompression beyond the baseline contemplated by the Court’s construction of the term “converted video signal” would not require a change to the Court’s construction of the term in its Markman Opinion. Moreover, while this issue might have been raised by the parties for resolution during claim construction, the Court has discretion to address it during consideration of a summary judgment motion. See Stern v. SeQual Technologies, Inc., 840 F.Supp.2d 1260, 1266 (W.D.Wash.2012) aff'd, 493 Fed.Appx. 99 (Fed.Cir.2012); SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1292 (Fed.Cir.2005).

In support of their argument that conversion, as recited in the claims asserted, requires decompression, VIS cites to Figure 3 of the '492 specification, which shows receipt of a signal through a wireless network, processing by Video Compress Decoder, 304a, and transmission of the video signal to the display via an uncompressed format. Mem. in Opp. at 17, ECF No. 163. There is undoubtedly support in the '492 specification for an embodiment requiring processing of the video signal from a compressed format to an uncompressed format during conversion of the video signal, specifically Figure 3 and the associated description of that Figure at 5:44-6:47 of the '492 specification. Furthermore, “[w]hile it is true, of course, that ‘the claims define the scope of the right to exclude’ and that ‘the claim construction inquiry, therefore, begins and ends in all cases with the actual words of the claim,’ Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d. 1243, 1248 (Fed.Cir.1998), the written description can provide guidance as to the meaning of the claims, thereby dictating the manner in which the claims are to be construed.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344 (Fed.Cir. 2001). However, the courts have repeatedly stated that “limitations from the specification are not to be read into the claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed.Cir. 1998) (citing E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed.Cir.1988)). The Federal Circuit has gone so far as to characterize “reading a limitation from the written description into the claims” as “one of the cardinal sins of patent law.” SciMed Life Sys., Inc., 242 F.3d at 1340 (citing Comark Communic’ns, Inc., 156 F.3d at 1186). Thus, in construing the claims, the most important question for the Court to consider is whether decompression is a limitation encompassed by the language of the claims asserted by VIS, without reading limitations from the specification into the claims.

Language describing conversion of the video signal from a signal format to a display format appears in some form in the processing element of every independent claim relevant to VIS’s asserted claims. However, as the specific language used in the independent claims differs with regards to this element, each claim must be evaluated individually with regard to the asserted decompression limitation.

1. '492 Patent, Claim 23

The '492 patent’s independent claim, claim 23, uses the following language with regard to the processing element:

“wherein processing by the signal conversion module includes converting the video signal from a compression format appropriate for the mobile terminal to a display format for the alternative display terminal that is different from the compression format, such that the converted video signal comprises a display format and a power level appropriate for driving the alternative display terminal.”

'492 patent, 10:17-24. Specifically, the processing of the video signal in claim 23 must include “converting ... from a compression format ... to a display format ... that is different from the compression format.” Id. (emphasis added). In examining this claim language, it is clear that decompression is encompassed by the language of claim 23 and, thus, its dependent claims as well. It might be argued that a format different from the first compression format could simply constitute a different compression format, achievable through the performance of a process referred to as “transcoding” by an encoder. However, the requirement that it be in a display format after conversion seems to indicate otherwise as evidence has been presented indicating that a video must be decompressed before it may be displayed. Mem. In Opp., Ex. A at ¶ 14, ECF. No. 163. Specifically, the evidence before the Court indicates that a video in a display format must be uncompressed, and the Court finds this evidence compelling. Furthermore, the Court may examine relevant treatises addressing the art at issue. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1293 (Fed.Cir.2005) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (en banc)). At the time of filing of the '492 patent, the process of transcoding itself required decompression as a decoder would have to decode the compressed video before it can be re-coded in the different format. “When decoding, codecs and decoders convert compressed video signals into raw, uncompressed video signals.” Mem. in Opp., Ex. A-2 at ¶ 29, ECF No. 159; see also '492 patent at 6:6-29; Rebuttal Br. at 9, ECF No. 168. Thus, the claim language not only encompasses decompression but requires it as a limitation of claim 23 of the '492 patent. Additionally, while, as Samsung argues, the specification describes “compress decoders” (which by definition first decompress the signals) separately from “encoders” (which convert the signals to the format(s) and power level(s) required by the terminals to which they interface), there is no language in the specification to indicate that they are mutually exclusive functions of the processing element of the claims, i.e. “converting the video signal” or “processing by the signal conversion module.” Since there is no language in the specification indicating mutual exclusivity of the “compress decoders” and the encoders, and since there is no requirement that decompression occur in a separate step from the conversion performed by the encoders, the proposition that decompression must occur in the conversion process finds support in the specification.

2. '711 Patent, Claim 15

The '711 patent’s independent claim, claim 15, uses the following language with regard to the processing element:

“wherein processing by the signal conversion hardware component includes converting the video signal from a compression format appropriate for the mobile terminal to a display format for the alternative display terminal that is different from the compression format, such that the converted video signal comprises the display format for the alternative display terminal.”

'711 patent, 9:45-10:6. As this uses the same key language already discussed above with regard to claim 23 of the '492 patent, the same analysis applies here. Thus, decompression is a limitation of the conversion element required by the language in claim 15 of the '711 patent, as well as its dependent claims.

3. '268 Patent, Claim 21

The '268 patent’s independent claim, claim 21, uses the following language with regard to the processing element:

“wherein the processing includes converting a signal format appropriate for the mobile terminal to a display format for the alternative display terminal that is different from the signal format, the display format being a high definition digital format, such that the converted video signal produced by the processing unit comprises the high definition digital format for output to the alternative display terminal.”

'268 patent, 10:18-25. Unlike the language discussed above with regard to claim 23 of the '492 patent and claim 15 of the '711 patent, claim 21 of the '268 patent makes no direct reference to a compression format. Thus, decompression is only an element of the conversion in this claim if “a signal format appropriate for the mobile terminal” would inherently be a compressed format, and “a high definition digital format” would inherently be an uncompressed format. Both parties agree that, given the bandwidth limitations of a cellular network, the “signal format appropriate for the mobile terminal” of the video signal which was “sent from the wireless network communication” would be a compressed format. Mem. in Supp. of Samsung’s Mot. for Summ. J. (“Mem. in Supp.”) at 15, ECF No. 144 (undisputed fact 60, which VIS does not dispute); Memo in Opp. at 17, ECF No. 163.

VIS presents the declaration of their expert, Arthur T. Brody, as evidence in support of the inference that the “high definition digital format” must be uncompressed. However, the declaration of Mr. Brody only refers to what would be required for the video signal output described in the Palin reference to be displayed on a television. See Memo in Opp., Ex. A at ¶ 14, ECF No 159. Additionally, with respect to data transmissions generally, Mr. Brody’s expert report states the increased data requirements for transmission of high definition signals and describes the corresponding need for those signals to be compressed in order to be transmitted at the rate of Megabit-per-second rather than Gigabit-per-second. Mem. in Opp., Ex. A-2 at ¶28, ECF. No. 163. Furthermore, Mr. Brody’s declaration suggests that decompression of a signal can take place after it has been transmitted to an alternative display terminal such as a television. Mem. in Opp., Ex. A at ¶ 14, EOF No. 163. Therefore, if a high definition signal can be, and preferably is, transmitted in a compressed format and the compressed signal can be decompressed for display at the alternative display terminal, decompression is not necessary prior to transmission to the alternative display terminal. VIS’s evidence thus argues against their assertion of decompression as a required limitation of the conversion element of this claim.

The Court notes that claim construction is a matter of law, and even if VIS’s arguments presented an issue of fact, it would not prevent the Court from rendering a decision on the meaning of the claim language. Markman, 52 F.3d at 979. Here, the claim language and specification, as well as the evidence presented as to what a person having ordinary skill in the art would have understood from the specification and claim language, support the finding that decompression is not a limitation required by the language of claim 21 of the '268 patent.

4. '381 Patent, Claims 19 and 33

The '381 patent’s independent claims, claims 19 and 33, use the. following language with regard to the processing element:

“wherein the processing ... includes converting a signal format appropriate for the mobile terminal to a different format for output to the alternative display terminal, such that the converted video signal produced by the conversion device comprises a high definition television (HDTV) digital signal for output to the alternative display terminal.”

'381 patent, 9:49-56 & 10:52-48. The only difference between the language used in claims 19 and 33 of the '381 patent and claim 21 of the '268 patent is that the '381 patent’s claims use the term “high definition television (HDTV) digital signal” in place of “high definition digital signal.” The insertion of the word “television” does not change the fact that while it may be transmitted as either a compressed or uncompressed signal, the increased data involved in a high definition video signal of any kind makes transmission as a compressed signal easier than transmission as an uncompressed signal. Mem. in Opp., Ex. A-2 at ¶ 28, ECF. No. 163. Therefore, the same analysis as used with respect to the '268 patent’s language applies. Furthermore, as there are no other differences in claim language between claims 19 and 33 of the '381 patent and claim 21 of the '268 patent, the analysis of the '268 patent’s claim applies to the '381 patent’s claims in its entirety. Thus, decompression is not a required element of the '381 patent’s claim 19, claim 33, or their dependent claims.

In summary, decompression is a limitation required by the claim language of only the '492 and '711 patents’ asserted claims. While the language covering the conversion element in the asserted claims of the '268 and '381 patents might, under a liberal interpretation, encompass decompression, it is not a required element of the conversion step. As such, in considering the validity or invalidity of the asserted claims of the '268 and '381 patents, decompression during conversion of the video signal is not a limitation which must be disclosed in the prior art in order to render the asserted claims of the '268 and '381 patents invalid as anticipated or obvious.

ii. Anticipation

Samsung asserts that U.S. Patent No. 7,580,005 (“Palin”) addressed the same “problem” identified by VIS’s '492 patent family and the same “solution” to that problem well before the priority date of the '492 patent family. Mem. in Supp. at 17, ECF No. 144. Samsung asserts that Palin thus anticipates the '492 patent family and renders the '492, '711, '268, and '381 patents invalid. Id.

“A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention.” Schering Corp., 339 F.3d at 1377. VIS argues in their brief in opposition that Palin fails to anticipate the asserted claims of the '492 patent family because Palin does not disclose the conversion element or the decompression step of conversion required by all the asserted claims. Mem. in Opp. at 15-16, ECF No. 163. Under the claim constructions stated above however, decompression is only required by the asserted claims of the '492 and '711 patents, not by the asserted claims of the '268 and '381 patents.

VIS further argues with respect to the asserted dependent claims that Palin fails to disclose the external power source limitation of some of those claims (the '492 patent’s claim 26, the '711 patent’s claim 18, and the '381 patent’s claim 22), and that Palin fails to disclose HDMI as required by other dependent claims (the '268 patent’s claim 27 and all asserted claims of the '381 patent). The Court will address those disputed issues in the following order; Palin’s disclosure of conversion of the video signal and failure to disclose decompression of the video signal during conversion, Palin’s failure to disclose an external power source, and Palin’s failure to disclose HDMI.

1. Palin’s Disclosure of Conversion and Failure to Disclose Decompression

VIS asserts that Palin fails to disclose decompression or conversion of the video signal as Palin describes a file transfer system. Mem. in Opp. at 18, ECF No. 163. Both parties agree that the mobile device in Palin receives a compressed video signal. Id.; Rebuttal Br. at 7, ECF No. 168. However, VIS asserts that Palin is directed to splitting data packets, wherein the received compressed file is split into portions, of which one of those portions is sent on to a television without any modification of the original compressed file.

Samsung argues in rebuttal that, other than the opinion of its expert, Mr. Brody, VIS fails to provide support for its argument that the “high quality graphics signal” described in Palin must be a compressed video signal. However, it is noted that, while VIS does rely on the opinion of its expert to support this assertion, the burden remains on Samsung to prove the invalidity of the asserted claims by clear and convincing evidence. i4i Ltd. P’ship, 131 S.Ct. at 2246.

The conversion element of the asserted claims requires at a minimum “only a change to the video signal identified at the beginning of the claim.” Markman Opinion, 976 F.Supp.2d at 814-15, ECF No. 196. In construing the term “converted video signal” in its Markman Opinion, the Court determined that the conversion of the video signal did not require a change to the underlying video content. Mark-man Opinion, 976 F.Supp.2d at 813-15. In reviewing Palin, it is clear that Palin teaches the splitting of the received video signal data packets into two categories — data for display on the first display, the mobile terminal, and data for display on the second display, the television. Palin also teaches teaching reformatting of the data to be displayed on the second display. Declaration of Dr. Kevin C. Almeroth (“Almeroth Dec.”), Ex. Q at Abstract, ECF No. 136. However, because a “converted video signal” as construed by this Court in its Markman Opinion does not require a change to the underlying video content, the fact that Palin’s processing step does not change the content of the video signal is irrelevant to the issue of whether it teaches the claimed conversion process to produce a “converted video signal.”

The '492 patent family’s independent claims all require a conversion of the video signal to produce a “converted video signal.” In all the asserted claims, this requires a conversion from a “format appropriate for the mobile terminal” to a “format [for/for output to] the alternative terminal,” which is different from the original “format appropriate for the mobile terminal.” '492 patent, 10:17-24; '711 patent, 9:45-10:6; '268 patent, 10:18-25; '381 patent, 9:49-56 & 10:52-48. Palin receives a video signal in a compressed format as data packet(s), which format is appropriate for the mobile terminal. Almeroth Dec, Ex. Q at 2:25-29 & 2:37-38, ECF No. 136. That the data received in Palin is in a format appropriate for the mobile terminal is further evidenced by the mobile terminal’s ability to process and/or display the received data packets. Id. at 2:54-57 & 3:3-13.

Palin also discloses that the converted video signal be formatted for the second, or alternative, display terminal. Id. at 2:39-41 (“the image on the second display device is viewed as taking into consideration the different display capabilities of the second display device.”). Thus, Palin discloses the limitations that the converted video signal comprises the format, display and power level, for the alternative display terminal. Palin further discloses a display format for output to the alternative display terminal. Id. at 2:54-57 (“The image data received by the mobile terminal comprises data to be ultimately reassembled into an image to be displayed on a display ... on another device.”). Therefore, Palin discloses conversion of a video signal from a format appropriate for the mobile terminal to a format appropriate for the alternative display terminal, including display format and power levels. As this is the only dispute as to whether Palin discloses or teaches the limitations of claims 21, 22, 25, 28, or 29 of the '268 patent, those claims are invalid as anticipated by Palin. Therefore, the Court grants summary judgment as to the invalidity of claims 21, 22, 25, 28, or 29 of the '268 patent.

However, with regard to the '492 and '711 patents’ conversion element, the Court has already stated that it includes the additional limitation of decompression. Because the conversion element as recited in the asserted claims takes place at the mobile terminal, the decompression of the video signal as a required limitation of the conversion of the video signal must similarly take place at the mobile terminal. Thus, in order to anticipate every limitation of the asserted claims of the '492 and '711 patents, Palin must also disclose decompression of the video signal at the mobile terminal.

VIS asserts that Palin fails to discuss compression or display formats and that the Bluetooth connection used in Palin to transmit data to the television would be incapable of supporting the transmission of uncompressed video. Mem. in Opp. at 19, ECF No. 163. VIS further asserts that Samsung has previously conceded, in one of Samsung’s own prior patent applications, that Bluetooth was not a suitable technology for relaying video. Id. In rebuttal, Samsung argues that VIS’ assertion regarding the inability to use a Blue-tooth connection to output a video signal in display format is belied by the '492 specification, which discloses the use of a Blue-tooth connection for that purpose. Rebuttal Br. at 7, ECF No. 168. The '492 specification lists a Bluetooth connection as a possible method of transmitting the video signal. '492 patent at 4:11-16 (where specification states that “[a] wireless connection [between the external display and the mobile terminal] may also be provided, although it may currently be less practical to provide than the wired connection because of the potential for high throughput rate requirements” and that wireless connection “may also implement any conventional known technology including but not limited to a Bluetooth connection.”). However, as already discussed above, decompression is not an inherently necessary step in the conversion element in all the asserted claims, let alone all the embodiments described in the '492 specification. Furthermore, VIS has rebutted Samsung’s argument with evidence that, due to the constraints of the bandwidth available through a Bluetooth connection, it would not be feasible to transmit an uncompressed video signal via a Bluetooth connection. Mem. in Opp., Ex. A at ¶ 12-13, ECF No. 159.

While Palin makes no reference to compression explicitly, Palin may still anticipate the claims if decompression is “inherent” in its disclosure. In re Robertson, 169 F.3d at 745. Furthermore, “inherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure.” Schering Corp., 339 F.3d at 1377. The Court concludes that Palin does inherently contemplate decompression as a step in its process as the video must ultimately return to an uncompressed foxmat in order to be displayed on the second display terminal. Mem. in Opp., Ex. A at ¶ 14, ECF No. 159. However due to the constraints of Bluetooth connections as already discussed, that decompression must take place after the video is transmitted in a compressed format via a Bluetooth connection to the television. In the asserted claims of the '492 and '711 patents, however, the decompression occurs during conversion at the mobile terminal, prior to transmission of the video signal to the alternative display terminal. Thus, while Palin does inherently disclose decompression, it does not disclose decompression as an element of the conversion of the video signal at the mobile terminal.

The Court concludes that Palin does not teach decompression at the mobile terminal prior to sending the signal to the television, as is required by the asserted claims of the '492 and '711 patents. As this is the only claim element of the asserted independent claims not disclosed by Palin, we will return to address this limitation in the obviousness analysis to determine if, as Samsung asserts, Palin in combination with other prior art renders decompression obvious.

2. Palin’s Failure to Disclose an External Power Source

VIS asserts that Palin fails to anticipate the '492 patent’s claim 26, the '711 patent’s claim 18, and the '381 patent’s claim 22, because Palin fails to disclose the use of an external power source to support the video signal conversion. Mem. in Opp. at 19-20, ECF No. 163. Samsung asserts that even if Palin does not disclose an external power source it was obvious that an external power source could be used as of the July 17, 2004 priority date because every mobile terminal’s battery is charged by plugging the mobile terminal into an external power source. Rebuttal Br. at 10-11, ECF No. 168. However, VIS argues that plugging a mobile terminal into an external power source as Samsung describes results in charging the battery, and any power used by the mobile terminal would first flow through the battery, the internal power source. Mem. In Opp. at 20-21, ECF No. 163.

The language used in these dependent claims with regard to the external power source limitation is identical. The language of claim 22 contemplates an external power source separate from the recharging process in a mobile terminal because claim 22 states that the power used is from a “source that differs from the internal power supply of the mobile terminal.” '381 patent at 9:66-10:4. These dependent claims teach that the conversion module receives power for the conversion from an external power source, which is separate from the internal power source — i.e. the battery.

The charging of a mobile terminal’s battery involves the provision of power from an external power source to the internal power source. Such method of recharging does not teach obtaining power from a source separate from the internal power source as required by the language of the claims. Thus, the Court finds VIS’S argument persuasive and summary judgment is denied as to claim 26 of the '492 patent, claim 18 of the '711 patent, and claim 22 of the '381 patent.

3. Palin’s Failure to Disclose HDMI

VIS asserts that Palin fails to anticipate claim 27 of the '268 patent and the asserted claims 19-33 of the '381 patent, because Palin fails to disclose HDMI as a method of transmitting the converted video signal to the alternative display terminal. Samsung asserts that even if Palin doesn’t disclose HDMI as a method of transmitting the converted video signal, using HDMI would have been obvious as of the July 17, 2004 priority date for the '268 and '381 patents, and that a person having skill in the art would have known about HDMI and been motivated to combine HDMI with Palin.

VIS does not dispute that a person having skill in the art would know about HDMI as of the priority date. However, VIS argues that a person having ordinary skill in the art would have no motivation to combine Palin with HDMI because Palin teaches sending a compressed signal and HDMI is an uncompressed format.

HDMI is a method by which a video signal in an uncompressed format can be transmitted between devices via a wireline between the first and second devices. Almeroth Dec. at ¶ 34, ECF No. 136; Mem. in Opp., Ex. A-2 at ¶ 37-38, ECF No. 159. Palin is directed to the transmission of a video signal from a mobile terminal to a second display terminal. VIS argues that Palin teaches sending a compressed signal, because the method of transmission disclosed in Palin is a Bluetooth connection, which is incapable of supporting the transmission of uncompressed video. Mem. in Opp. at 18 & Ex. A at ¶ 9-14, ECF No. 159. Thus, the substitution of HDMI in place of Bluetooth in Palin would then imply a switch from the transmission of compressed video signals to the transmission of uncompressed video signals. This switch would require decompression of the original video signal received by the mobile terminal to take place at the mobile terminal in order to facilitate transmission of an uncompressed video signal via HDMI from the mobile terminal to the second display terminal. Thus, the combination would require a reworking of the system taught by Palin. Nevertheless, both HDMI and Palin are directed to facilitating the transmission of video signals between devices.

VIS also argues that due to the size requirements for HDMI and the size limitations of mobile terminals, especially as of the priority date, it would not have been obvious to combine Palin with HDMI. Thus, in order for the combination of Palin and HDMI to have been obvious, a person having ordinary skill in the art would have to have been motivated to combine a system which transmits a compressed video signal with a method for transmitting an uncompressed video signal — thereby neeessitating incorporation of decompression of the video signal into the processing of the video signal — as well as to combine the fairly bulky output port required for HDMI with a relatively small electronic device. The Court concludes that whether the combination of Palin and HDMI would have been obvious to a person having ordinary skill in the art is a close call. Due to the standard at summary judgment, which requires that the evidence be viewed in favor of the nonmovant, VIS, and the clear and convincing evidence of invalidity burden of proof borne by Samsung, summary judgment is denied on this limitation. Samsung has failed to meet its burden of proof and as such, the Court denies summary judgment of invalidity with regard to claim 27 of the '268 patent and all the asserted claims of the '381 patent.

iii. Obviousness

In addition to asserting anticipation of the '492, '268, '711, and '381 patents through the Palin reference, Samsung alternatively asserts that the Digital Living Network Alliance’s publication “Home Networked Device Interoperability Guidelinesv1.0,” (hereinafter “DLNAv1.0”), in combination with Palin, renders obvious any claims not already anticipated by Palin alone. Mem. in Supp., 26, ECF No. 144. Samsung additionally included U.S. Patent No. 8,028,093 (“Karaoguz”) in the combination of references rendering the '492 patent family obvious. However, Karaoguz was included to support Samsung’s argument of invalidity should the Court adopt in its Markman Opinion Samsung’s proposed construction of the term “converted video signal”. Id. Thus, as the Court did not adopt Samsung’s proposed construction, the parties’ arguments regarding Karaoguz are no longer relevant and the Court will not address them.

To establish a prima facie case of obviousness, the burden is on the alleged infringer to establish, by clear and convincing evidence, that a skilled artisan would have both been motivated to combine the prior art and have a reasonable expectation of success in doing so. Kinetic Concepts, Inc., 688 F.3d at 1360. The Graham factors which, as discussed above, inform the obviousness analysis are as follows: “(1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the art, and (4) any relevant secondary considerations, such as commercial success, long felt but unsolved needs, and the failure of others.” Wyers v. Master Lock Co., 616 F.3d at 1237 (citing Graham, 383 U.S. at 17-18, 86 S.Ct. 684). As the Court must consider all four of the Graham factors in its obviousness analysis, In re Cyclobenzaprine, 676 F.3d at 1076-77, the Court will structure its analysis accordingly. “The determination of invalidity for reasons of obviousness under 35 U.S.C. § 103 is a legal conclusion based on underlying facts” with the Graham factors being “factual considerations that underlie the obviousness inquiry.” Galderma Laboratories v. Tolmar, 737 F.3d 731, 736 (Fed.Cir.2013) (citing Graham, 383 U.S. at 17-18, 86 S.Ct. 684). At summary judgment, therefore, a determination regarding obviousness may only lie if there are no genuine disputes of material fact with regard to the Graham factors. Anderson, 477 U.S. at 248, 106 S.Ct. 2505.

The third Graham factor is uncontested and the experts for each party appear to have come to an agreement regarding the level of ordinary skill in the art. Consideration of the second Graham factor suggests that, should DLNAvl.O be valid as a prior art reference to the '492 and '711 patents, the prior art would likely render at least the asserted independent claims of those patents obvious. Furthermore, based on the evidence currently presented, the fourth Graham factor, secondary considerations, would not likely succeed in rebutting the prima facie case of obviousness should DLNAvl.O be valid prior art. As discussed below, however, consideration of the first Graham factor reveals that there are genuine disputes of material fact as to DLNAvl.O’s status as prior art to the '492 patent family. These genuine disputes of material fact are sufficient to preclude the Court from finding that Samsung has demonstrated a prima facie case of obviousness.

1. The First Graham Factor

The first Graham factor involves the scope and content of the prior art. Here, the parties dispute both whether DLNAv1.0 qualifies as prior art and what is taught by DLNAv1.0. The first issue the Court must address therefore is whether DLNAvl.O qualifies as a printed publication within the meaning of 35 U.S.C. § 102.

“Printed publications” have been classified as prior art references which can invalidate a patent under 35 U.S.C. § 102(a) and (b). The courts have interpreted the statutory phrase “printed publication” consistently within § 102 with the only difference between sections (a) and (b) being the timing of the publication. See, Cooper Cameron Corp. v. Kvaemer Oilfield Products, Inc., 291 F.3d 1317, 1324 (Fed.Cir. 2002); Application of Foster, 52 C.C.P.A. 1808, 343 F.2d 980, 986 (1965) (“[W]hen a reference fully discloses in every detail the subject matter of a claim, the statutory basis of a rejection on that reference is 35 U.S.C. § 102(a) if the reference date is before the applicant’s date of invention, thereby establishing want of novelty, and section 102(b) if the reference date is more than one year prior to the actual United States filing date, thereby establishing a so-called ‘statutory bar,’ more accurately, a one-year time-bar which results in loss of right to a patent, regardless of when the invention was made.”).

“The statutory phrase ‘printed publication’ has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was ‘published.’ ” In re Klopfenstein, 380 F.3d 1345, 1348 (Fed.Cir. 2004) (quoting In re Cronyn, 890 F.2d 1158, 1160 (Fed.Cir.1989)). “A document is publicly accessible if it ‘has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.’ ” Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1333 (Fed.Cir.2009) (quoting In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). In its analysis of the case law concerning printed publications as prior art references within the meaning of 35 U.S.C. § 102, the Federal Circuit has stated that:

throughout our case law, public accessibility has been the criterion by which a prior art reference will be judged for the purposes of § 102(b). Oftentimes courts have found it helpful to rely on distribution and indexing as proxies for public accessibility. But when they have done so, it has not been to the exclusion of all other measures of public accessibility.

In re Klopfenstein, 380 F.3d at 1350. “The determination of whether a reference is a ‘printed publication’ under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d at 1350 (citing In re Cronyn, 890 F.2d at 1161 and In re Hall, 781 F.2d 897, 899 (Fed.Cir.1986)).

Due to the presumption of validity of an issued patent, the burden of proof remains with Samsung to show by clear and convincing evidence that DLNAvl.O is a valid prior art reference which functions to invalidate the patent. Hi Ltd. P’ship, 131 S.Ct. at 2246. Samsung has offered evidence showing that DLNAv1.0 was published June 22, 2004, before the '492 patent family’s priority date of July 16, 2004. Mem. in Supp. at 26, ECF No. 144; Berliner Declaration, Ex. V at 69:5-70:25 & 152:13-155:16, ECF No. 146. Samsung has offered the sworn testimony of DLNA’s Marketing Manager, Katherine Gengler, showing that, at the very least, DLNAvl.O was available to members of' the publishing organization as of June 22, 2004. Berliner Declaration, Ex. V at 70:11-25, ECF No. 146. VIS has presented evidence that the cost of membership in DLNA was a $10,000 fee as of July 19, 2013, the date of Ms. Gengler’s deposition. Mem. in Opp., Ex. D-3 at 104:18-23, ECF No. 159. These facts are undisputed by VIS and Samsung.

Notwithstanding this information, Samsung has offered no evidence showing how or at what price DLNAv1.O would have been available to non-members of the interested public. The sworn testimony of DLNA’s Marketing Manager, Katherine Gengler, states merely that posting a document on an external website and making it available for sale was DLNA’s common method of publication. Berliner Declaration, Ex. V at 70:11-17, ECF No. 146. Furthermore, she does not know what price DLNAvl.O would have been sold at, had it been posted for sale via the website. Id.

Samsung appears to argue, in the alternate, that DLNA’s membership consists of a significant portion of the interested public, and, as such, that DLNAv1.0 was sufficiently accessible to the interested public. See Cooper Cameron Corp., 291 F.3d at 1324 (“on remand the district court should take into consideration that reports need only be accessible to the interested public, Mass. Inst, of Tech. v. AB Fortia, 774 F.2d 1104, 1109, 227 U.S.P.Q. 428, 432 (Fed.Cir. 1985), which in this case may be the very entities who had access to the documents: SISL joint venture members, participants, and their contractors and licensees.”). However, in Cooper Cameron Corp. there was evidence that the information was not maintained in a state of confidentiality and much of the information was available without restriction — issues which the district court in that case was instructed to consider on remand. Id.; see also, Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1351 (Fed.Cir.2008) (where the court found the documents, which “were visible to any member of the interested public without requesting them from an ETSI member,” to be publicly available, especially as “ETSI did not impose restrictions on ETSI members to prevent them from disseminating information about the standard to non-members.”).

Here, VIS has put forward evidence that distribution of this document, DLNAv1.O, was restricted and that it was known that non-public documents on DLNA’s “Kavi website” could only be shared among member companies. Almeroth Dec, Ex. R, DLNAv1.O, at 1, ECF No. 145 (“Do Not Copy” “Copyright 2004 ... Any form of reproduction and/or distribution of these works is strictly prohibited.”); Mem. in Opp., Ex. D-3, Deposition of Katherine Gengler, at 142:3-