Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Capital Security Systems, Inc. v. NCR Corp.

United States District Court, N.D. Georgia, Atlanta Division

May 31, 2017

CAPITAL SECURITY SYSTEMS, INC., Plaintiff,
v.
NCR CORPORATION, SUNTRUST BANKS, INC., and SUNTRUST BANK, Defendants.

          OPINION AND ORDER

          WILLIAM S. DUFFEY, JR. UNITED STATES DISTRICT JUDGE.

         This matter is before the Court on Plaintiff Capital Security Systems, Inc.'s (“Capsec”) Motion to Strike [181].

         I. BACKGROUND

         Capsec moves to strike certain invalidity arguments and factual information relied upon in NCR's Motion for Summary Judgment [162], arguing that the arguments and information were not timely disclosed.

         On May 19, 2014, Capsec filed this action for patent infringement against Defendants NCR Corporation (“NCR”), SunTrust Banks, Inc., and SunTrust Bank.[1] The Patents-in-Suit[2] relate to advanced automated teller machines (“ATM”) that automate the process for dispensing cash in exchange for deposited checks. NCR sells ATMs to financial institutions. Capsec claims certain of NCR's ATM models infringe its patents.

         On August 10, 2014, the Court issued its scheduling order [22] (“Scheduling Order”). The Scheduling Order required NCR to provide, on or before August 29, 2014, its invalidity contentions and responses to Capsec's infringement contentions. (Scheduling Order at 2). On August 29, 2014, NCR served its Invalidity Contentions [181.3], and, on February 2015, NCR served its Amended Invalidity Contentions [181.4]. The Amended Invalidity Contentions allege that each of the Patents-in-Suit is invalid over one or more of four references, either by anticipation or in combination with one or more of at least 8 other references for each patent. Each of the charts in NCR's Amended Invalidity Contentions maps a primary reference to the claim elements and maps secondary references to certain claim elements, and includes language stating that it would have been obvious to combine the primary reference with the secondary references. The Amended Invalidity Contentions did not identify specific obviousness combinations or motivations to combine specific groups of references.

         The Scheduling Order also required NCR to serve, on or before April 1, 2015, its initial expert report on invalidity. (Scheduling Order at 5). On April 1, 2015, NCR served the Expert Report of Anthony J. Stanners Regarding the Invalidity of Capital Security System, Inc.'s Patents-in-Suit (U.S. Patent Nos. 5, 897, 625; 7, 653, 600; 7, 991, 696; and 8, 121, 948) [181.5] (the “Initial Stanners Report”). The Initial Stanners Report identified five primary references that NCR contends anticipate or render obvious the majority of the claims of the Patents-in-Suit. These references are Johnston, Riach, Swinton, Sharman, and AT&T 5675. (See id.). For each of these five references, the Initial Stanners Report analyzed two-reference obviousness combinations with fourteen other references. (See, e.g., id. at 67-79).[3]

         On June 28, 2016, the Court issued its claim construction order [133], [134] (“Claim Construction Order”). A primary claim construction issue before the Court was the meaning of the “valid” terms.[4] During claim construction, NCR's position was that the “valid” terms should be construed to require some authentication of the signature. NCR proposed the following construction: “a cursive signature confirmed as being the authentic signature of a qualified user.” ([46.1] at 11). The Court construed the “valid” terms as “a cursive signature determined to be a signature with characteristics consistent with the cursive signature of a qualified user.” ([134] at 2).

         On September 28, 2016, NCR served its Second Amended Invalidity Contentions [181.7] and the Supplemental Stanners Report of Anthony J. Stanners Regarding the Invalidity of Capital Security Systems, Inc.'s Patents-In-Suit (U.S. Patent Nos. 5, 897, 625; 7, 653, 600; 7, 991, 696; and 8, 121, 948) [181.8] (the “Supplemental Stanners Report”). The Second Amended Invalidity Contentions included six new prior art references: LeClerc, Campbell, Chuang, Moore, Döhle, and Graef (collectively, the “New References”). The Supplemental Stanners Report also included the New References. The Supplemental Stanners Report, like the Initial Stanners Report, set forth obviousness combinations consisting of one of the five primary references with a single secondary reference. The Supplemental Stanners Report also stated:

It is my opinion that Claim 15 of the ‘625 Patent is invalid for obviousness in view of U.S. Patent No. 5, 673, 333 (Johnston), or for obviousness over Johnston in view of one or more of Nohl, Anisimov, DiMauro, Houle, Sharman, Riach, Graf, LeClerc, Campbell, Chuang, Moore, Döhle, Graef, Swinton, Crabtree, Hain, and/or Milne.

(Id. at A-1-1).

         On October 28, 2016, Capsec served the Rebuttal Expert Report of Dr. Chandrajit Bajaj, Ph.D Regarding Validity of U.S. Patent Nos. 5, 897, 625; 7, 653, 600; 7, 991, 696; and 8, 121, 948 [181.9] (the “Bajaj Report”). The Bajaj Report argued that certain references identified by NCR are not prior art and identify claim limitations not disclosed in the cited references. The Bajaj Report also argued that Stanners failed to conduct a proper obviousness analysis.

         On November 7, 2016, NCR served its Reply Expert Report of Anthony J. Stanners Regarding the Invalidity of Capital Security System, Inc.'s Patents-In-Suit (U.S. Patent Nos. 5, 897, 625; 7, 653, 600; 7, 991, 696; and 8, 121, 948) [181.10] (the “Stanners Reply Report”). The majority of the Stanners Reply Report sets forth specific combinations of prior art references that allegedly render the claims obvious. The following combinations were disclosed for the first time in the Stanners Reply Report:

• Claim 15 of the '625 Patent
1. Sharman in view of Crabtree, Hain, and DiMauro;
2. Sharman in view of Crabtree, Hain, and LeClerc;
3. Sharman in view of Crabtree, Hain, and Campbell;
4. Sharman in view of Crabtree, Hain, and Döhle;
5. Sharman in view of Graef, Hain, and DiMauro;
6. Sharman in view of Graef, Hain, and LeClerc;
7. Sharman in view of Graef, Hain, and Campbell;
8. Sharman in view of Graef, Hain, and Döhle;
9. AT&T 5675 in view of Hain and DiMauro;
10. AT&T 5675 in view of Hain and LeClerc;
11. AT&T 5675 in view of Hain and Campbell;
12. AT&T 5675 in view of Hain and Döhle
• Claims 1-2, 6-8 of the '600 Patent; Claims 1, 2, 6, 9 of the '696 Patent; and Claims 1-3, 7-9 of the '948 Patent
1. Sharman in view of Johnston and DiMauro
2. Sharman in view of Johnston, DiMauro, and Anisimov
3. Sharman in view of Johnston, DiMauro, Anisimov and Franklin
4. Sharman in view of Johnston, LeClerc, and Anisimov
5. Sharman in view of Johnston, LeClerc, Anisimov and Franklin
6. Sharman in view of Johnston, Campbell, and Anisimov
7. Sharman in view of Johnston, Campbell, Anisimov and Franklin
8. Sharman in view of Johnston, Döhle, and Anisimov
9. Sharman in view of Johnston, Döhle, Anisimov and Franklin
10. Sharman in view of Johnston, LeClerc, and Houle
11. Sharman in view of Johnston, LeClerc, Houle and Franklin
12. Sharman in view of Johnston, Campbell, and Houle
13. Sharman in view of Johnston, Campbell, Houle and Franklin
14. Sharman in view of Johnston, Döhle, and Houle
15. Sharman in view of Johnston, Döhle, Houle and Franklin
16. Sharman in view of Campbell and DiMauro
17. Sharman in view of Campbell, DiMauro, and Anisimov
18. Sharman in view of Campbell, DiMauro, Anisimov and ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.