On Track Innovations Ltd. v. T-Mobile USA, Inc. (106 F. Supp. 3d 369, 2015)

MEMORANDUM AND ORDER

ALISON J. NATHAN, District Judge

This action arises from a patent infringement dispute between On Track Innovations Ltd. (“OTI”), a developer of virtual payment systems and the current owner of U.S. Patent No. 6,045,043 (“the ’043 patent”), and T-Mobile USA, Inc. (“T-Mobile”), a mobile network operator (“MNO”). OTI alleges that T-Mobile infringed the ’043 patent through its sale of near field communication (“NFC”) mobile phones, which, when used in conjunction with a SIM card, allow their owners to make virtual cashless payments "with certain merchants.

Presently before the Court are six motions: three Daubert motions seeking to exclude expert testimony and three motions for summary judgment. OTI moves to exclude the testimony of Dr. Michael Alan Martin Davies, T-Mobile’s rebuttal expert on issues relating to NFC technology and the market for mobile phones. Additionally, OTI submits two motions for summary judgment, one seeking summary judgment affirming T-Mobile’s infringement of the ’043 patent and a second dismissing T-Mobile’s affirmative defenses of laches, estoppel, acquiescence, patent misuse, and inequitable conduct. On the other side, T-Mobile submits motions to exclude the expert testimony of Dr. Ayssa Apsel regarding infringement and also the testimony of Dr. Christine Meyer regarding damages. It has also filed a cross-motion for summary judgment on the issue of infringement and patent invalidity.

For the reasons set forth below, T-Mobile’s motion to strike the testimony of Dr. Apsel is DENIED. Its motion for summary judgment on non-infringement and patent validity is similarly DENIED. OTI’s motion for summary judgment on infringement is GRANTED. Its motion for summary judgment on T-Mobile’s fourth through ninth affirmative defenses is similarly GRANTED in its entirety. OTI’s motion to strike the testimony of Mr. Davies is GRANTED IN PART and DENIED IN PART. Finally, T-Mobile’s motion to strike the testimony of Dr. Meyer’s is GRANTED.

I. STANDARD OF REVIEW

Summary judgment is properly granted when, after reviewing the evidence 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 a judgment as a matter of law.” Fed. R. Civ. P. 56(c); Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 45 (2d Cir.2000). For summary judgment purposes, a genuine issue exists if the evidence is such that a reasonable jury could decide in the non-moving party’s favor. Id. In the context of an infringement claim, summary judgment is appropriate when there is no dispute about the operation of the accused products. See IGT v. Bally Gaming Int’l, Inc., 659 F.3d 1109, 1121 (Fed.Cir.2011).

In a summary judgment setting, “the burden is upon the moving party to demonstrate that no genuine issue respecting any material fact exists.” Gallo v. Prudential Residential Servs., Ltd. P’ship, 22 F.3d 1219, 1223 (2d Cir.1994). “When the burden of proof at trial would fall on the nonmoving party, it ordinarily is sufficient for the movant to point to a lack of evidence ... on an essential element of the nonmovant’s claim.” Cordiano v. Metacon Gun Club, Inc., 575 F.3d 199, 204 (2d Cir.2009). “Where the moving party demonstrates the absence of a genuine issue of material fact, the opposing party must come forward with specific evidence demonstrating the existence of a genuine dispute of material fact.” Brown v. Eli Lilly & Co., 654 F.3d 347, 358 (2d Cir.2011) (citations omitted). “More specifically, it must do more than simply show that there is some metaphysical doubt as to the material facts and may not rely on conclusory allegations or unsubstantiated speculation.” Id. (citations and quotation marks omitted).

II. BACKGROUND

This case concerns the alleged infringement of Patent No. 6,045,043, owned by Plaintiff On Track Innovations, Inc., by Defendant T-Mobile USA, Inc., a mobile telephone network operator that provides wireless services and that sells and distributes mobile phones. (Dkt. No. 167, Ex. 3 at 97:13-16) (“Silis Deposition”).

A. History of the ’043 Patent

The application ultimately issuing as the ’043 Patent was filed on December 30, 1997, naming Oded Bashan, Nehemya Itay, Ronnie Gilboa, and Moshe Aduk as inventors. (See Dkt. No. 138 (“Shuman Declaration”), Ex. A). Initially, on June 25, 1999, the Patent Office (“PTO”) mailed a Non-Final Office Action to Helfgott & Karas, P.C., local counsel for the inventors and OTI, rejecting all pending claims as being anticipated by U.S. Patent No. 5,733,812 (“Kreft ’812 Patent”). (Id. Ex. B). On September 22, 1999, Helfgott & Karas filed an Amendment and Remarks in response to the Office Action. (Id. Ex. C). In light of the Amendment and Remarks, a Notice of Allowability was mailed on October 25, 1999 and the patent itself was issued on April 4, 2000. (Id. Exs. A, D). The ’043 Patent will expire on December 29, 2017. (See Dkt. No. 184, Ex. 4 at 4).

B. The ISIS Mobile Wallet Technology

In 2010, T-Mobile, joined by Verizon and AT & T, formed ISIS, a company whose purpose was to promote cashless transactions made from mobile phones. (See Dkt. No. 179, Exs. 15-16). As part of its participation in ISIS, T-Mobile sells phones capable of implementing NFC technology. It also distributes Universal Integrated Circuit Cards (“UICC” or “SIM card”) that must be inserted into the NFC phones in order to facilitate cashless payments. (See Dkt. No. 167, Ex. 35 ¶ 16) (“Apsel Report”). ISIS then makes software, known as the ISIS Mobile Wallet, available for subscription. Subscribers with NFC phones can then make mobile payments using their phone. (Id.).

The NFC phones are capable of operating in “card emulation mode,” but do not do so continuously. (See Dkt. No. 192, Ex. D ¶ 178) (“Conrad Rebuttal Report”). When operating in card emulation mode, the phone can communicate with a contact-less reader as a contactless card, enabling mobile payment services. (Apsel Rep. ¶22). In effect, when operating in this mode, the phone replaces a physical plastic payment card. (Silis Dep. Tr.. 54:22-55:21). This is “the primary function of any Isis device,” as it facilitates “payment, e-cash, and transit applications.” (See Dkt. No. 167, Ex. 26 at 42) (“ISIS Architecture”). Accordingly, “[t]he NFC hardware must support card emulation.” (Id.)

At a general level, the hardware employed by ISIS combines a secure element on the SIM card with a processor, NFC controller, and antenna located on the phone itself. (ISIS Architecture 14). An image of this structure is below, [redacted text]

(ISIS Architecture 14).

A secure element is a tamper-resistant device with an embedded microprocessor chip capable of encrypting and decrypting data. It is capable of storing data securely. (Apsel Rep. ¶ 31). [redacted text] (Apsel Rep. ¶ 32; see Dkt. No. 167, Ex. 27 at 8 (“JVL Secure Element Requirements”); Silis Dep. Tr. at 60:11-23; Tech Tut. Tr. at 6:2-6). [redacted text] (See ISIS Architecture 14). Although the secure element could be integrated into the phone’s circuitry in several ways, including through a removable card inserted into a phone’s MicroSD card slot, T-Mobile mandates that it take the form of the SIM card due to certain advantages in portability and durability (See Dkt. No. 167, Ex. 31 at 3.2.3-2 (“GSMA Requirements for Single Wire Protocol”); Silis Dep. Tr. 76:1-12).

Beyond the secure element on the SIM card, the ISIS hardware incorporates the phone’s general purpose processor (See Dkt. No. 167, Ex. 33 at Section 5.2.11) (“T-Mobile Product Requirements Document” or “PRD”). The NFC controller, also within the phone, serves to connect the antenna, the processor and the secure element. (See ISIS Architecture 24). All NFC phones at issue here also come complete with an NFC proximity antenna. (See Silis Dep. Tr. 57:9-13).

Finally, it is worth highlighting that the NFC phones facilitate data communication through the use of “communication protocols,” which Dr. Apsel explained to be a kind of common language for data communication. (Tech. Tut. Tr. at 10:1-4). Use of these protocols facilitates the interoperability of devices by ensuring they are able to communicate with one another. (Id. at 10:13-16). Contact communication is commonly governed by ISO 7816. (Id. at 13:21-22). The specifications for the secure element used by T-Mobile enabled use of the ISO 7816 protocol. (See Dkt. No. 167 (“Yonay Declaration”), Ex. 39 at 2.1.3). The specifications further require communications between the antenna and the SIM Card, first by transmitting con-tactless data with a contactless communications protocol, possibly ISO 14443, from the antenna to the NFC Controller (or antenna interface), and then from the NFC controller to the SIM card along a physical wire governed by the Single Wire Protocol (“SWP”). (See ISIS Architecture 42).

To be clear, the NFC phones at issue here are manufactured by third parties not involved in this suit. However, the technical specifications described are dictated by requirements and standards promulgated by ISIS and T-Mobile to phone manufacturers. For instance, ISIS distributed a document titled “Isis Architecture: Mobile NFC Device Specification,” which mandates certain specifications for manufacturers who wish for their products to be compatible with the ISIS program. (See generally ISIS Architecture). Similarly, T-Mobile issued a Product Requirements Document, or PRD, to manufacturers also detailing certain features and abilities required of participating phones. (See generally T-Mobile PRD). These features were not chosen idly, but rather reflected T-Mobile’s technical and business needs. (See Barnes Dep. Tr. at 23:12-16).

C. The Litigation

OTI commenced this action in March 2012. (See Dkt. No. 1). In its most recent amended complaint, OTI claims that T-Mobile sells NFC phones that, when used in conjunction with the SIM cards also sold by T-Mobile, directly infringe upon claims 1, 2, 12, 24, and 25 of the ’043 patent. (See generally 2/11/14 Am. Compl.). T-Mobile in turn counterclaims for a declaration that the NFC phones are non-infringing and that the ’043 patent is invalid and unenforceable. (See generally 02/24/14 Answer & Counterclaim). It also raises nine affirmative defenses. (Id.).

On May 7, 2013, after extensive discovery, a technology tutorial was held to provide the Court with background information on the patent and its subcomponents. (See Dkt. No. 48). Two days later, a Mark-man hearing was held to allow the parties to present arguments concerning the scope of the ’043 patent. (See Dkt. No. 50). On June 20, 2013, the Court issued a claim construction order that largely adopted the Plaintiffs proposed constructions of four disputed terms in the patent. (See Dkt. No. 52). Defendant’s subsequent motion for reconsideration was denied. (See Dkt. No. 64).

D. Claim Construction and the Scope of the ’043 Patent

OTI alleges that design of the NFC phones and SIM cards infringe upon the claims of the ’043 patent. The ’043 patent describes a data transaction device having contact and contactless modes of operation. (See Dkt. No. 52 at 3) (“Claim Constr. Or.”). Specifically, the device both employs a wireless mode of operation in the form, of a coil antenna wrapped around the edges of the device, allowing for near field communication, and also a contact mode of operation, in which the device’s microprocessor communicates with a separate device (in this instance a phone) through a direct contact. (Id.) Notably, the ’043 patent claims to distinguish itself through the ability to connect the semiconductor device with both the contact and contactless modes of communication through separate, dedicated lines of communication, obviating the need to use a switching element. (Id.) This ostensibly improved upon the switching elements employed in the prior art supplanted by the ’043 Patent, namely U.S. Patent No. 5,206,495 (“Kreft ’495 Patent”) and the Kreft ’812 Patent. (Id.).

In its June 10, 2013 claim construction order, the Court clarified four disputed terms relating to the ’043 Patent. (See generally Claim Constr. Or.). First, the Court concluded that use of the word ‘card’ in the application’s preamble was intentional and that the term should be ascribed its plain meaning, but also clarified that the preamble did not limit the scope of the claim. (Id. 3-10). Second, the Court interpreted the phrase “a semiconductor device for operating in said contact and contactless modes” to not restrict the physical design of the device to that of a card. (Id. 11-13). Third, the term “contact field” was read to be a particular subset of galvanic connections allowing data transmission between the contacts and the semiconductor device in accordance with the contact data communications protocol. (Id. 13-16). Moreover, the Court interpreted the term ‘contacts’ broadly, construing it to mean any eleetrical connection between components, rather than T-Mobile’s interpretation which narrowed the definition to a contact field requiring a card reader. (Id.). Finally, the phrase “allowing data transmission between the contacts and the semiconductor device in accordance with said contact data communications protocol only during said contact mode” was not read to disclaim a device that has connectivity between the contact field and the microprocessor during contactless mode. (Id. 17-20).

III. DISCUSSION

The parties have presented a range of motions concerning both summary judgment and the admissibility of certain expert reports. The subject matter of these motions ranges from patent invalidity, patent infringement, affirmative defenses to patent infringement, and the computation of damages resulting from any alleged patent infringement. Because many of these motions are contingent upon one another, the Court addresses them in an order so as to first determine whether OTI holds a valid patent and whether it has been infringed.

A. T-Mobile’s Motion to Strike the Testimony of Dr. Alyssa Apsel

OTI’s claim for patent infringement relies principally upon the expert testimony of Dr. Alyssa Apsel. Accordingly, if this testimony is excluded, OTI’s claim would fail and the remaining motions would be mooted. However, for the reasons below, T-Mobile’s motion to strike is DENIED.

1. Legal Standard

Federal Rule of Evidence 702 permits expert testimony so long as “(a) the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony is the product of reliable principles and methods; and (d) the expert has reliably applied the principles and methods to the facts of the case.” Fed. R. Evid. 702. The rule requires district courts to “act as a gatekeeper to exclude invalid and unreliable expert testimony.” Floyd v. City of New York, 861 F.Supp.2d 274, 286 (S.D.N.Y.2012) (quoting Hollander v. American Cyanamid Co., 172 F.3d 192, 202 (2d Cir.1999)) (internal quotation removed).

Nonetheless, “the Federal Rules of Evidence favor the admissibility of expert testimony, and [the court’s] role as gatekeeper is not intended to serve as a replacement for the adversary system.” Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F.Supp.2d 558, 562 (S.D.N.Y.2007). In other words, a court’s focus must be on the principles and methodologies underlying the expert’s conclusions, rather than on the conclusions themselves. See Floyd, 861 F.Supp.2d at 286. In assessing whether a methodology is reliable under Rule 702, courts consider (1) “whether [the method or theory] can be (and has been) tested,” (2) “whether [it] has been subjected to peer review and publication,” (3) “the known or potential rate of error [associated with the technique]-and the existence and maintenance of standards controlling the technique’s operation,” and (4) whether the method has achieved “general acceptance” with the relevant community. Id. (quoting Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 595, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993)).

2. T-Mobile’s Argument Regarding the Use of Standards

T-Mobile seeks to exclude Dr. Apsel’s November 4, 2013 expert report regarding infringement on the basis that it is conclusory and fails to support itself with reliable evidence. Specifically, it argues that Dr. Apsel failed to provide separate analysis for the eight different NFC phones alleged to have infringed the ’043 Patent and further that she failed to provide analysis of the specific components used in these phones and the SIM cards. (T-Mobile Mem. 4-8). The real thrust of this argument is that by relying on various standards promulgated by T-Mobile, ISIS, and industry groups, rather than the actual components and circuitry of the devices, Dr. Apsel has failed to rely on “sufficient facts or data” as required by Rule 702.

As a matter of law, this contention is misguided. In Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed.Cir.2010), the Federal Circuit expressly rejected the Defendant’s argument that a finding of infringement could only be based upon direct analysis of the products at issue. Rather, the Fujitsu court concluded that it was appropriate to rely on industry standards to demonstrate infringement so long as the devices actually practiced those standards. Id. at 1327. The court qualified this in two ways. First, an industry standard may “not provide the level of specificity required to establish that practicing that standard would always result in infringement.” Id. Second, standards often contain optional provisions and compliance solely with required portions of a standard “would not establish that the accused infringer [chose] to implement the optional section.” Id. at 1327-28. In other words, “[o]nly in the situation where a patent covers every possible implementation of a standard will it be enough to prove infringement by showing standard compliance.” Id. at 1328. See also France Telecom, S.A. v. Marvell Semiconductor, Inc., 12-CV-04967 (WHA)(NC), 2013 WL 1878912, at *3 (N.D.Cal. May 3, 2013) (noting that standards are admissible as proof of infringement except when they are insufficiently specific or optional).

The Fujitsu Court’s logic is sound and applicable to this case. It would be “be a waste of judicial resources to separately analyze every accused product that undisputedly practices the standard.” Id. at 1327. Indeed, on a “Isis Mobile Wallet FAQ” page on its website, T-Mobile claimed that “new phones are added all the time” to the ISIS ecosystem. (2/11/2014 Am. Compl., Ex. B). Rather than examine the unique circuitry of an ever-expanding number of phones participating in ISIS, it is appropriate to analyze the mandatory standards with which these phones must necessarily comply. If the device in question does not in fact comply with the standard, in spite of being required to do so, the “accused infringer is free to either prove that the claims do not cover all implementations of the standard or to prove that it does not practice the standard.” Id.

T-Mobile attempts to remedy its argument in its reply by contending that a product-by-product analysis is required because Dr. Apsel’s report does not conclusively demonstrate that every allegedly infringing product complied with T-Mobile’s promulgated standard. But this argument confuses OTI’s ultimate burden in proving infringement with its immediate burden in demonstrating the admissibility of expert testimony. All OTI must demonstrate for purposes of this motion is that Dr. Apsel’s report complies with Rule 702. That courts have reached conclusions regarding infringement through the use of standards is relevant to this motion insofar as it establishes that standards constitute a sufficiently reliable basis for formulating an expert opinion on the subject of infringement. It does not mean that Dr. Apsel’s report can only be admitted if it proves the entirety of OTPs case. See, e.g., Ambrosini v. Labarraque, 101 F.3d 129, 134 (D.C.Cir.1996) (“Rather, once an expert has explained his or her methodology, and has withstood cross-examination or evidence suggesting that the methodology is not derived from the scientific method, the expert’s testimony, so long as it “fits” an issue in the case, is admissible under Rule 702 for the trier of fact to weigh.”) Indeed, as the Supreme Court explained in Daubert, the proper remedy for “attacking shaky but admissible evidence” is “[vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof.” 509 U.S. at 596, 113 S.Ct. 2786. To the extent Dr. Apsel’s testimony fails to meet OTl’s ultimate burden in proving infringement, that is a subject either for T-Mobile’s motion for summary judgment or for trial.

Having concluded that T-Mobile and ISIS’s own promulgated standards constitute reliable evidence for expert testimony regarding the circuitry of the NFC phones, the Court now turns to the actual strictures of Rule 702 as applied to Dr. Apsel’s testimony.

3. Applying Rule 702 to Dr. Apsel’s Testimony

Application of Rule 702 to Dr. Apsel’s testimony establishes its admissibility. T-Mobile gamely attempts to argue that Dr. Apsel is not qualified as an expert on this subject matter because she “admits that mobile phones are complicated systems” and has “no particular expertise or experience with the accused products or their components” beyond her “generalized knowledge of electronics as an electrical engineering professor.” (T-Mobile Mem. 6). Dr. Apsel is an associate professor of electrical engineering at Cornell University and has a Ph.D. in electrical engineering from Johns Hopkins University. (Apsel Dec., Ex. A). She has published work extensively on circuit design and low power wireless communication. (Id.) She has also worked on several projects within the mobile phone industry, including on a project related to peer-to-peer communications. (Apsel 2014 Tr. at 61:4— 17). Even if courts within the Second Circuit did not “liberally construe” the qualifications requirement, see Nosal v. Granite Park LLC, 269 F.R.D. 284, 287 (S.D.N.Y.2010) (citing cases), opining on the circuitry and structure of NFC technology falls well within Dr. Apsel’s bailiwick.

For purposes of Rule 702(b), the Court concludes that Dr. Apsel relied on sufficient facts and data and that her use of applicable- standards was appropriate under the circumstances. Although, as T-Mobile argues, she did not review documents provided by the various phone manufacturers or extensively assess the phones physically, she did review a range of documents relating to standards for NFC technology, including two documents promulgated -by ISIS, JVL Secure Element Requirements and ISIS Architecture; one document promulgated by T~ Mobile, the PRD; and a range of documents meant to promote interoperability and standardization of NFC technology (e.g. GSMA Requirements for Single Protocol NFC Handsets, GSMA NFC UICC Requirements Specification, Technical Requirements for the Deutsche Telekom Next Generation UICC, Gemalto UpTeq Mobile NFC 2.0 data sheets, and STMicroelectronics ST38F1M data sheets). (See Apsel Rep. ¶¶ 3-4).

The documents promulgated by ISIS and T-Mobile established the required standards for NFC phone manufacturers whose products were to be included in the ISIS mobile payment program. Moreover, as explained in the Court’s infringement analysis, many of the industry standard documents relied upon by Dr. Apsel describe the circuitry of components used in the NFC phones, such as the STMicroelectronics semiconductor device and the Gemalto UICC. See infra Section III.B.3.L Most critically for purposes of the infringement analysis, Dr. Apsel’s opinion relied on the mandatory standards in these documents. T-Mobile attempts to obfuscate this fact by contending that the document “provides no details or requirements regarding the circuitry design or layout within any of the accused products,” IT-Mobile Mem. 7) but never actually points to any instances where these standards, promulgated and required by T-Mobile, were not put into effect by the manufacturers.

Admittedly, portions of these documents merely provide recommended or optional standards for manufacturers. But T-Mobile fails to highlight a single instance where Dr. Apsel r'elied on anything other than the mandatory provisions. Rather than come forward to highlight instances where the standards relied upon by Dr. Apsel were not applicable, T-Mobile repeatedly attempts to raise some metaphysical doubt as to whether or not the standards were actually adopted by the manufacturers. For purposes of admissibility T-Mobile and ISIS’s own required specifications are a reliable basis for formulating an opinion on the circuitry of the phones at issue. See Ericsson Inc. v. D-Link Sys., Inc., 10-CV-473, 2013 WL 4046225, at *4 (E.D.Tex. Aug. 6, 2013) (industry standard constituted sufficient evidence for the jury to conclude that Defendant’s products infringed). T-Mobile’s description of Dr. Apsel’s opinions as “rank speculation” is not persuasive. (T-Mobile Mem. 1).

The various cases raised by T-Mobile on this issue are either inapposite or harmful to their position, such as WiAV Networks, LLC v. 3Com Corp., 10-cv-03448 (WHA), 2010 WL 3895047 (N.D.Cal. Oct. 1, 2010). The plaintiff in WiAV Networks sued “well over five dozen corporate defendants across the United States, Canada, Japan, China, Taiwan, Belgium, Finland, and Sweden, accusing each of willfully and deliberately infringing two United States Patents.” Id. at *1. The defendants were mostly “wholly unrelated companies with wholly unrelated products.” Id. The question before the court was not the admissibility of expert testimony, but rather whether or not joinder of the defendants was appropriate. Id. at *2.

In determining joinder was inappropriate, the court concluded that it was “far from a foregone conclusion that the asserted claims in WiAV’s patents [would] cover all implementations of the protocol” and accordingly the Plaintiff would have to prove infringement on a case-by-case basis rather than by reference to the protocol. Id. at *2. The court reached this conclusion after determining that “[t]he infringement issues will vary from product to product as they will invariably contain different components, from different manufacturers, with different specifications, that work in different ways.” Id. at *3. Just the opposite is the case here. As T-Mobile’s own chief principal engineer acknowledges, the NFC phones at issue here all operate under a common set of specifications, namely those promulgated in the T-Mobile,PRD and ISIS Architecture, which “define ... the hardware requirements for the phones.” (Silis Dep. Tr. 53:3-13).

Comparatively, XpertUniverse, Inc. v. Cisco Sys., Inc., 09-cv-157 (RGA), 2013 WL 865974, at *2 (D.Del. Mar. 7, 2013) is on point. The court there concluded that it was “possible for an expert to determine product features based on documentation.” To the extent the opposing party wanted to proffer witnesses to “testify that some of the materials describe features that did not make it into the actual accused ... products,” consideration of that testimony was one of several “factual questions for the jury.” Id. See also France Telecom, S.A. v. Marvell Semiconductor, Inc., 12-cv-04967 (WHA)(NC), 2013 WL 1878912, at *2 (N.D.Cal. May 3, 2013) (concluding that relying on industry standards was sufficient for plaintiff to disclose the theory of its case to defendant).

T-Mobile further contends that Dr. Apsel did not use, or appropriately apply, reliable methods and instead simply gave subjective, conclusory opinions. However, T-Mobile’s argument that Dr. Apsel’s analysis is conclusory betrays T-Mobile’s own desire to re-litigate issues already settled at claim construction. No fewer than four times in the pending motions, T-Mobile puts forward a novel interpretation of the term “fixedly connected,” while alleging that OTI has misconstrued the Court’s claim construction. T-Mobile insists that that tfie parties agree that the term “fixedly connected” refers to a product that “at the very least” does not have a switching element in the data path between the contacts and the microprocessor. (T-Mobile Mem. 11). But T-Mobile misstates the Court’s definition of that term. Nowhere in the Court’s claim construction order did it suggest that the ’043 patent only covered devices in which absolutely no switching element was present at all. Rather, the Court explained that “[t]he ’043 patent obviates the need to use a switching device ... to connect the microprocessor with both the contact and contactless sources of data.” (Claim Constr. Or. 3). As explained in that order, the advantage of this arrangement is that the “use of separate, dedicated connections between the microprocessor and the data entry points allows the microprocessor to (1) use different protocols for communicating through contact and contactless mode and (2) alter its protocol capabilities through software updates rather than hardware re-tooling.” (Id.) (emphasis added). Accordingly, the ’043 patent disclaims the use of a switching device to the extent it is required to connect the semiconductor device itself to the contact and contactless data entry points. T-Mobile’s attempt to read the Court’s general use of the term ‘switching element’ outside of this critical context is unpersuasive.

Their novel interpretation of the Court’s claim construction in hand, T-Mobile argues that Dr. Apsel not only failed to base her opinion on reliable data, but also that, by failing to trace a circuit path demonstrating the absence of any switching element in the infringing products, Dr. Apsel failed to apply proper methods for demonstrating patent infringement. However, this argument, and their identical argument regarding claim 25, fail. In both instances Dr. Apsel relied on relevant, mandated standards from either T-Mobile or ISIS and thus met the strictures of Rule 702. See, e.g., XpertUniverse, Inc., 2013 WL 865974, at *2.

In conclusion, Dr. Apsel’s report meets the requirements of Rule 702.

B. Cross-Motions for Summary Judgment on Question of Infringement

Both T-Mobile and OTI move for summary judgment on the question of patent infringement. For the reasons below, T-Mobile’s motion is DENIED and OTI’s is GRANTED.

1. T-Mobile’s Motion for Summary Judgment on Infringement and Patent Invalidity

T-Mobile first asks that the Court construe the terms “semiconductor device” and “fixedly connected” as used in the ’043 patent, on the basis that OTI has materially shifted their definition of those terms since claim construction. (T-Mobile Mem. 3). Next, it raises three arguments as to why it must be granted summary judgment on the question of infringement. (Id.). First, it contends that the NFC phones at issue are not covered by the ’043 patent because their microprocessors are not “fixedly connected” to the contacts, but rather operate through a switch within the semiconductor device used in ISIS hardware. Second, T-Mobile argues that the prior art anticipates the claims if they are construed to cover products which contain switching elements internal to their semiconductor devices. Third, T-Mobile alleges that Dr. Apsel’s report on infringement fails to create a genuine issue of material fact for trial.

i. T-Mobile’s Proposed Claim Construction

T-Mobile argues that OTI has raised new construction claims that the court should resolve on summary judgment. Specifically, T-Mobile believes that OTI has changed their definition of the terms “semiconductor device” and “fixedly connected.” OTI responds that it has not changed its definition of these terms, that T-Mobile has waived any ability to challenge claim construction, and that the two terms at issue should simply be accorded their plain and ordinary meaning.

As OTI notes, the Court first rendered its Markman decision over a year ago. (Dkt. No. 52). Prior to that, the Court considered extensive briefing, a technological tutorial, presentations, and oral arguments concerning the disputed terms. (Dkt. Nos. 22, 23, 25, 27, 30, 33, 36, 48, 50, 68). The benefit of these materials are-amongst the “[sjound practical reasons counseling] against construing additional terms based on claim construction arguments raised for the first time in summary judgment briefs.” Apple, Inc. v. Samsung Electronics Co., Ltd., 2014 WL 252045, at *3 (N.D.Cal. Jan. 21, 2014) (noting that the Court “painstakingly adjudged the parties’ claim construction disputes during the claim construction phase based on their in-depth technology tutorials and voluminous submissions of intrinsic and extrinsic evidence”).

While courts have the obligation to resolve disputes regarding claim scope, the Court “fulfilled that duty when it provided a thorough claim construction opinion earlier in these proceedings.” Id. (citing O2 Micro Int’l v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed.Cir.2008)). See also SanDisk Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1292 (Fed.Cir.2005) (upholding district court’s decision to not to hear untimely claim construction arguments due to “broad deference to the trial court’s application of local procedural rules in view of the trial court’s need to control the parties and flow of litigation before it.”) (quoting Genentech, Inc. v. Amgen, Inc., 289 F.3d 761, 774 (Fed.Cir.2002)).

The Court’s decision not to accept T-Mobile’s invitation back down the rabbit hole of renewed claim construction is buttressed by the fact that T-Mobile’s proffered reason for defining these terms is flawed. Simply put, the Court is not convinced that OTI has changed its interpretation of these terms or that any real dispute exists regarding their definition. T-Mobile alleges that OTI has changed their definition of the term “semiconductor device” from “any device made out of a semiconductor material” or a “microprocessor” (Dkt. No. 185 (“Haber Declaration”), Ex. 18 at 18:15-19:6, Tech. Tutorial Tr. at 7:18-8:14) to “a microprocessor or microcontroller” (Haber Decl., Ex. 7 ¶ 34). T-Mobile alleges this shift was deliberate in order to encompass the STMicroelectronics semiconductor device at issue in the NFC phones, which it contends is a micro-controller.

While T-Mobile selects various uses of the terms ‘microprocessor’, ‘microcontroller’, and ‘semiconductor device’ to conclude that OTI has moved the goalposts, OTI has in fact been consistent in contending that microprocessors and microcontrollers are simply certain kinds of semiconductor devices. This manufactured controversy is squarely undermined by the testimony of T-Mobile’s own expert at the technology tutorial. Dr. Winters testified that:

So, just to relate that we’re in agreement with OTI in terms of the definition of a semiconductor device, and Dr. Apsel’s expert report, and as well as the named inventor, Mr. Itay, we agree with the definition of semiconductor device, that is the semiconductor device is well understood to include any device; for example, a microprocessor, wired logic chip, or other types of semiconductor chips made of semiconductor material..

And during the deposition of Mr. Itay, a question was asked, “Is a microprocessor a semiconductor device?” And the answer was, “Yes, correct.”

Next, “Is a micro controller a semiconductor device?” And the answer was “Yes” in that case.”

(Tech. Tut. Tr. at 43:9-21) (emphasis added). See also id. at 43:4-6 (Dr. Winters notes that semiconductor devices “include diodes, transistors, amplifiers, memory, microprocessors, micro-controllers, as well as computers.”) (emphasis added). Indeed, Dr. Conrad similarly notes that “both microprocessors and microcontrollers that include microprocessors are both semiconductor devices,” although he contends that the ’043 patent only referred to microprocessors. (Dkt. No. 192 (“Conrad Declaration”), Ex. B ¶ 110). This flies in the face of Dr. Winters’ previous testimony that “the ’043 patent does not depart from the well-understood use of a smart card semiconductor device.” (Dkt. ¶ No. 23 37).

While T-Mobile stretches OTI’s use of the term “microprocessor” to somehow be exclusive of other kinds of semiconductor devices, the Court is once again cognizant of Dr. Winter’s testimony that semiconductor devices are “commonly known as a microprocessor.” (Id. ¶ 38). Accordingly, the Court does not find that OTI has broadened its definition of semiconductor device, but rather concludes that both parties initially agreed to give that term its usual, broad definition.

Similarly, the Court finds no need to construe the term “fixedly connected.” T-Mobile insists this term implies the absence of a switching element in the entirety of the device. (T-Mobile Mem. 5). But the claim clearly states that the contacts are “fixedly connected to the semiconductor device during both said contact and contactless models.” (Haber Deck, Ex. 1 at 13:44-46). Accordingly, as already explained during claim construction, the patent’s limitation is circumscribed to the area between the contacts and the semiconductor device — nowhere else. (See Claim Constr. Or. 23).

In sum, the Court agrees with OTI that no further claim construction is required at this late juncture in the case. The Court now turns to the actual merits of T-Mobile’s summary judgment motion for non-infringement and patent invalidity,

ii. The STMicroelectronics Semiconductor Device Is Within the Scope of the ’043 Patent

T-Mobile contends both that the NFC phones at issue do not infringe on the ’043 patent and, additionally, that the ’043 patent is invalid. This section addresses, and ultimately rejects, T-Mobile’s various arguments in support of the first contention.

T-Mobile’s first argument that the NFC phones did not infringe on the ’043 patent is that the NFC phones fall outside the scope of the patent because they use microcontrollers, which are a kind of semiconductor device including a switching element and microprocessor. This argument requires little discussion in light of the foregoing analysis.

T-Mobile argues that the ISIS hardware cannot infringe because it uses a STMicroelectronics microcontroller, a kind of semiconductor device. As T-Mobile explains, these semiconductor devices contain, inter alia, a computer processing unit (“CPU”), a kind of microprocessor (Flaber Deck, Ex. 18 at 32:15-18), and an internal bus (Id., Ex. 22). The internal bus in the device is produced by ARM Holdings, pic (“ARM”), which in its publicly available specifications clarifies that the bus is a form of multiplexor (Id. at 3), which all parties agree is a kind of switching element. (Conrad Rebuttal Rep. ¶¶ 139-142; Flaber Deck, Ex. 17 at 108:13-16). T-Mobile concludes that that no infringement has occurred because the existence of a multiplexor within the semiconductor device and along the data path for all data— contact and contactless — travelling to the microprocessor (also inside the semiconductor device) from the contacts (i.e. the contact field and antenna coil), is inconsistent with a device that distinguished prior art by eliminating the use of switching elements. All OTI' has done, T-Mobile insists, is move the switching element from being outside the semiconductor device, as. in the Kreft ’495 patent, and wedged it inside of the semiconductor device.

Regardless of whether OTI has simply shifted the switching element inside the semiconductor device, this argument is wrong. As the Court made clear in its claim construction order, the ’043 patent “obviates the need to use a switching device ... to connect the microprocessor with both the contact and contactless sources of data. The use of separate, dedicated connections between the microprocessor and the data entry points allows the microprocessor to (1) use different protocols for communicating through contact and^ contactless mode and (2) alter its protocol capabilities through software updates rather than hardware retooling.” (Claim Constr. Or. 3). The Court did not state that the ’043 patent precludes any use of a switching element. Similarly, OTI has never explicitly disclaimed the use of a switching element in the ’043 patent in any capacity. The plain text of the ’043 patent refers to the removal of the switching element from the data path between the semi-" conductor device and the contacts.

In light of this, T-Mobile’s first argument fails. Regardless of whether it is termed a microprocessor or a microcontroller, the STMicroelectronics ST33F1M is semiconductor device containing an internal bus or multiplexor. However, because OTI did not disclaim semiconductor devices -which themselves contained a switching element, the presence of such an element in the accused products does not remove them from the scope of the ’043 patent.

iii. Anticipation of the ’043 Patent

T-Mobile next moves to invalidate the ’043 patent on the theory that it was anticipated by prior art, specifically the Kreft ’495 patent. Under 35 U.S.C. § 102 a claim is anticipated “if each and every limitation is found either expressly or inherently in a single prior art reference.” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed.Cir.2010) (citing Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1360 (Fed.Cir.1998)). However, it is the burden of a patent challenger to demonstrate invalidity by clear and convincing evidence. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1372 (Fed.Cir.2005) (citing 35 U.S.C. § 282). See also Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 131 S.Ct. 2238, 2240, 180 L.Ed.2d 131 (2011) (holding that patent invalidity defense under 35 U.S.C. § 282 must be “proved by clear and convincing evidence.”). Furthermore, the prior art must “not only disclose all of the elements of the claim within the four corners of the document, but ... also disclose those elements arranged as in the claim.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1351 (Fed.Cir.2013) cert. denied sub nom. Cheese & Whey Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., — U.S. -, 134 S.Ct. 1542, 188 L.Ed.2d 557 (2014).

T-Mobile begins by explaining that Kreft ’495 displays a semiconductor device including an internal switching element and a microprocessor. Figure 2 from the Kieft ’495 patent, shown below, illustrates this.

Accordingly, it argues in the alternative that if the ’043 patent can be read to describe a semiconductor device with an internal switching element and microprocessor, then the ’043 patent is anticipated by Kreft ’495, which possesses a similar semiconductor device. The image below, taken from T-Mobile’s brief, shows on the left the STMicroeleetronics semiconductor device that OTI alleges to be part of the infringing system in the NFC phones at issue.

T-Mobile takes the position that the ARM internal bus from the STMicroelectronics semiconductor device used in the NFC phones is the equivalent of switching element 2.1 in the Kreft ’495 design and that the CPU unit stands in for microcomputer 2.2. OTI, however, takes the position that the PTO examiner approving Kreft ’495 interpreted microcomputer 2.2 alone to be the semiconductor device, with switching element 2.1 operating externally to this semiconductor device.

Resolving this disagreement is complicated by ambiguity in the Kreft ’495 patent itself. For instance, the Abstract to Kreft ’495 explains that the device “includes a switching element device, preferably a multiplexer, coupled between a semiconductor device and contacts in a contact field and transmission coils.” (Haber Deck, Ex. 4 at 1). Moreover, claim 1 of the patent claims “a semiconductor device; and a switching element device coupled to said contacts, and coils, and said semiconductor device operative to effect selective data transmission between said contacts or said coils and said semiconductor device.” (Id. at 4:33-38). That language reinforces OTI’s position that the switching element in the Kreft design was separate from the semiconductor device. However, in the Detailed Description of the Presently Preferred Embodiments portion of the patent, it describes a “semiconductor device 2 includefing] suitable switching elements for selecting use of either the coils 4 and 5 or the contacts in the contact field 3 for data transmission.” (Id. at 3). It further explains that “the semiconductor device 2 preferably comprises both a switching element device 2.1 and a microcomputer 2.2 with arithmetic unity and memory.” (Id.) This language strongly favors T-Mobile’s position, as it suggests the semiconductor device is inclusive of the switching element and the microprocessor, just as the STMicroelectronics semiconductor device includes a CPU and an internal bus.

The analysis is further complicated by the fact that both parties acknowledge that a microprocessor is independently a semiconductor device, and not merely a component of one. (Tech. Tut. Tr. At 4:19-20, 7:18-25; 43:4-6). T-Mobile’s position is supported by Figure 2 from the Kreft ’495 patent, which appears to envision a semiconductor device including both the microprocessor and the switching element. Additionally, while OTI takes the position that Dr. Winters, T-Mobile’s initial expert, believed microprocessor 2.2 to constitute the semiconductor device, this is not the case. In his technology tutorial presentation, Dr. Winters explained that “the ’043 patent incorrectly depicts the Kreft ’495 patent” and took the position that “the semiconductor device, 2, includes both 2.1, the switching device, as well as 2.2, the microcomputer.” (Tech. Tut. Tr. at 52:6-12). Moreover, in her testimony, Dr. Apsel acknowledged that Kreft ’495 appeared to describe two semiconductor devices. (See, e.g., Haber Decl., Ex. 18 at 34:11-20; Ex. 7 ¶ 47). Dr. Conrad also acknowledged that Kreft described multiple embodiments of the semiconductor device. (Conrad Decl., Ex. B ¶ 95).

This ambiguity is a question of law that falls within the domain of the Court. See Function Media, L.L.C. v. Google, Inc, 708 F.3d 1310, 1326 (Fed.Cir.2013) (citing 02 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360 (Fed.Cir.2008) (“determining the meaning and scope of the patent claims” is a question that “the court, not the jury, must resolve”). The Court concludes that the weight of intrinsic evidence favors T-Mobile’s reading of the Kreft ’495 patent. All three figures associated with the Kreft ’495 patent reveal a single chip 2, which, as clarified by Figure 2, internally includes a switching element 2.1 and a microcomputer 2.2. (Haber Decl., Ex. 4 at 1 — 2). The Abstract language that the device “includes a switching element device, preferably a multiplexer, coupled between a semiconductor device and contacts in a contact field and transmission coils,” does not conclusively prove that the microcomputer 2.2 is the operative semiconductor device simply because it is referred to as a “semiconductor device.” Rather, this language reflects the fact that “semiconductor device” is a broad term inclusive of numerous components, as Drs. Winter and Apsel established during the technology tutorial. As other portions of the Kreft ’495 patent show, the entirety of chip 2 is also referred to as a semiconductor device. (Id. at 2:65). More importantly, the preferred embodiment claimed by Kreft discloses a “semiconductor device 2” comprised of “both a switching element device 2.1 and a microcomputer 2.2.” (Id. at 3:12-14). “[A] claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.” MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323, 1333 (Fed.Cir.2007) (citing OnLine Techs., Inc. v. Bodenseewerk PerkinElmer GmbH, 386 F.3d 1133, 1138 (Fed.Cir.2004)). Accordingly, the Court concludes that both the Kreft ’495 patent and the ’043 describes a, semiconductor device with an internal switching element.

However, a material dispute of fact remains as to other key elements of the anticipation claims. Specifically, the parties disagree as to what constitutes the “antenna interface” of the Kreft ’495 patent. Analyzing the image below, Figure 3 of the Kreft patent (a more detailed version of Figure 2), OTI contends that entities 2.1.1 and 2.1.4, the rectifier and converter respectively, constitute the entirety of the “antenna interface.” All six lines leading out from the contact field 3 connect to the unlabeled box, which represents the switching element (a multiplexor). Line 16 also connects to 2.1.2, the comparator. Accordingly, Dr. Apsel explains, they are not “coupled” to “at least some” of the contacts in the contact field. (Haber Decl., Ex. 753) (“Apsel Rebuttal Report”). Rather, they only connect to the switching element, which is comprised of the multiplexer and the comparator 2.1.2 which, according to Dr. Apsel, “has the sole purpose of controlling the multiplexer.” (Id. ¶ 59). The proposition that comparator 2.1.2 is part of the switching element, rather than the antenna interface, finds support in the text of the pateiit, which explains that “[t]he switching element 2.1 further indudes a comparator 2.1.2” (emphasis added) and also that “[t]he comparator 2.1.2 produces an output signal at output E3, which output signal is supplied to a multiplexing unit 2.1.3.” (Haber Decl., Ex. 4 at 3).

FIG. 3

Conversely, Dr. Conrad reads the antenna interface to include the comparator 2.1.2, which would provide a direct link to contact line 16. Dr. Conrad repeatedly states that the comparator is part of the antenna interface (see, e.g., Conrad Deck, Ex. B 95, 169, 172, 179, 181). In their motion for summary judgment, T-Mobile states that Dr. Apsel and Dr. Conrad are in agreement that the antenna interface is contained within element 2.1 of Kreft’s Figure 2. (T-Mobile Mem. 21). Their analysis then proceeds from the assumption that Dr. Apsel included comparator 2.1.2 and the multiplexer as part of the antenna interface, but this is plainly not the case. (Apsel Rebuttal Rep. ¶ 59). Perhaps sensing this, T-Mobile alternatively takes the position that, because OTI interpreted the terms “contact field” and “galvanic connection” broadly, the antenna interface is in fact connected to all of the contacts, including the antenna coil 4 and 5. This inchoate argument neglects the fact that the Court’s Markman order interpreted the term “contact field” as a “particular subset of galvanic connections allowing data transmission between the contacts and the semiconductor device in accordance with the contact data communications protocol” (Claim Constr. Or. 13) (emphasis added). Accordingly, connections not capable of allowing data transmission in accordance with the ISO 7816 contact data protocol are not relevant for purposes of assessing this element of claim 1. Thus, T-Mobile’s argument that the antenna interface’s connection to antenna coils 4 and 5 should count for purposes of demonstrating anticipation of this element of claim 1 must fail. Those contacts do not facilitate data transmission between -the coils and the semiconductor device in accordance with the contact data communications protocol because the antenna coils cannot communicate via the contact data protocol. (Haber Decl., Ex. 4 at 4:9-15). This incontrovertible fact is reinforced by the plain text of the ’043 patent, which emphasizes that the antenna interface must be connected to the antenna coil and at least some contacts in the contact field. This would be highly redundant if the antenna coil connection could be included as constituting “contacts in the contact field.”

“Anticipation is ultimately a question of fact, but also depends on proper claim construction — a legal issue.” Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 412 F.3d 1284, 1287 (Fed.Cir.2005). Determining whether the Kreft ’495 patent described a semiconductor device including an internal switching element was a legal question concerning the scope of that patent. Conversely, whether the Kreft ’495 discloses an antenna interface coupled with some contacts in the contact field is a question regarding “whether or not an element [of the allegedly anticipated patent] is inherent in the prior art.” Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed.Cir.1999). This is a question of fact. Id. See also In re Johannes, 566 Fed.Appx. 923, 925 (Fed.Cir.2014) (“Anticipation is a question of fact, as is the subsidiary question of whether a prior art reference discloses — either expressly or inherently — a claim limitation.”). Because T-Mobile’s proffered evidence does not adequately demonstrate that the antenna interface is coupled with some contacts in the contact field, summary judgment is inappropriate on the question of anticipation. See Sanofi-Aventis v. Sun Pharm. Indus., Ltd., 08-cv-6286 (SHS), 2011 WL 1899789, at 2 (S.D.N.Y. May 11, 2011).

iv. Dr. Apsel’s Testimony Raises a Genuine Issue for Trial

T-Mobile’s argument that Dr. Apsel’s opinions fail to create a genuine issue for trial is simply a highly abridged repackaging of their motion to strike her testimony. Moreover, as explained, her testimony raises genuine issues of dispute regarding the connections of the antenna interface. Accordingly, this argument is rejected,

v. Summary

For the reasons above, T-Mobile’s motion for summary judgment on the issues of infringement and patent invalidity is DENIED. T-Mobile may, however, demonstrate the invalidity of the ’043 patent at trial.

3. OTI’s Motion for Summary Judgment on Infringement

OTI now moves for summary judgment on the question of whether T-Mobile’s NFC phones infringe on claims 1 and 2 of the ’043 patent. For the reasons below, OTI’s motion is GRANTED.

i. The NFC Phones Infringe on Claim 1 of the ’043 Patent

Claim 1 of the ’043 patent describes a:

• “data transaction card having contact and contactless modes of operation, comprising:

• (a) a semiconductor device for operating in said contact and contactless modes in accordance with a respective contact or contactless data communications protocol;

• (b) a contact field (i) including contacts fixedly connected to the semiconductor device during both said contact and contactless modes, and (ii) allowing data transmission between the contacts and the semiconductor device in accordance with said contact data communications protocol only during said contact mode,

• (c) an antenna coil for allowing con-tactless data transmission between the antenna coil and the semiconductor device, in accordance with said contactless data communications protocol, and

• (d) an antenna interface (i) coupled (A) to the antenna coil, (B) to the semiconductor device and (C) to at least some of the contacts in the contact field and (ii) being responsive to an electromagnetic field across the coil for effecting said contactless data transmission.”

(Yonay Decl., Ex. 1 at 13:39-58).

A review of the undisputed facts leads to the conclusion that OTI has demonstrated that the NFC phones, when used in conjunction with the SIM card distributed by T-Mobile, form a system infringing upon the one described in the ’043 patent. As to the first element, there is no dispute that the first SIM card that T-Mobile distributed to ISIS subscribers was the Gemalto UpTeq Mobile NFC Card. (Id., Exs. 36-37). Indeed, this was aeknowledged by Mr. Silis during his deposition testimony. (Id., Ex. 3 at 71:12-13). According to Gemalto, this card includes a ST33F1M micro-controller produced by STMicroeleetronics. (Id., Ex. 40 at 11). The ST33F1M is a semiconductor device capable of communicating contact data with a host processor using ISO 7816 and contactless data with an NFC controller using the ETSITS 102 613 standard, also known as the Single Wire Protocol (“SWP”). (Id., Ex. 41 at 1). Moreover, T-Mobile requires that its SIM cards be able to independently communicate both contact and contactless data in order to allow the phone to make calls while operating the NFC technology. (JVL Secure Element Requirements 16; T-Mobile PRD 5). Specifically, T-Mobile’s requirements state that it “must be possible for the end user to receive voice or data communications” while performing an NFC transaction and that it “must be possible to perform an NFC transaction while in voice or data communication mode,” (Yonay Deck, Ex. 33 at 5). Mr. Silis’ testimony is confirmative. When asked whether the NFC phones were capable of making calls while working in NFC mode, he responded, “It works. Most of the time there’s no interference, you know. Because we ask for that requirement and then the vendors work towards that. There’s no interference. I’ve tested it.” (Id., Ex. 3 at 91:14-17). There is no countervailing evidence in the record. Accordingly, OTI has established that there is no dispute that the NFC phones contain a semiconductor device, operating in contact and contactless mode, in accordance with respective contact and contactless data communications protocols.

Next, regarding the second element, there is no dispute of material fact that the SIM cards have contacts fixedly connected to the semiconductor device and allowing data transmission between the contacts and the semiconductor device. Specifically, the SIM card has eight exposed contact pads (C1-C8). (Id., Ex. 35 at ¶ 39; Ex. 4 at 1162). The image below, from Dr. Apsel’s report, identifies these eight exposed contact pads. (Yonay Deck, Ex. 35 ¶ 39). One of these pads, C6, is used for communication with the NFC controller via the SWP protocol. (Id., Ex. 3 at 64:5-13; 81:3-10) Another, C7, is used for communication with the host processor using the ISO 7816 protocol. (Id. 81:3-10).

OTI takes the position that each of these contacts is “fixedly connected” to input/output ports on the semiconductor device. (Id., Ex. 5 at 137:13-138:23, 144:2-148:9; Ex. 35 at ¶ 39). The input/output ports are separate, with one dedicated for contactless data (the SWP input/output port) and one dedicated to contact data (the ISO 7816 input/output port). (Id., Ex. 41 at 1). Because the data exchanged between the contact field and the input/output port dedicated to contact data is communicated via ISO 7816, a contact data communications protocol, OTI contends the second condition of this element is met. (Id., Ex. 5 at 147:4-148:9). T-Mobile’s primary opposition to this is to again rely on Dr. Conrad’s opinion that the contacts are not ‘fixedly’ connected to the semiconductor device because they pass through the internal bus before communicating with the CPU within the ST33F1M. (Id., Ex. 6 ¶ 145) (“Conrad Report”). But the Court does not accept, as a matter of law, the premise that the CPU within the ST33F1M semiconductor device is the semiconductor device described by the ’043 patent. See supra Section III.B.1.ii.

T-Mobile also argues that contactless data travels via C7, meaning that the design does not allow for “data transmission between the contacts and the semiconductor device in accordance with said contact data communications protocol only during said contact mode.” Specifically, Dr. Conrad contends that “Contact C7 is used to transmit data that has been exchanged in a contactless mode.” (Conrad Report ¶ 172). Dr. Conrad describes a security process through which the user of the cellphone device is authenticated by having a MNO cell tower communicate with the SIM card. (Id. ¶ 173). The SIM card contains an authentication key that is communicated back to the tower in order to confirm the user’s identity. (Id.). Dr. Conrad further explains that this process is facilitated through a RF radio transmission, a form of contactless data transmission, from the cell tower to the user’s phone and, critically, that the “data that results from this contactless authentication of the phone” is transmitted via the C7 contact on the SIM card. (Id.). Accordingly, the C7 contact must transmit some data that