United States District Court, D. Delaware
before the Court is Defendant's Motion for Summary
Judgment of Invalidity Under 35 U.S.C. § 112 (D.I. 415)
and related briefing (D.I. 416, 490, 534). The Court heard
oral argument on April 12, 2017. For the reasons that follow,
IT IS HEREBY ORDERED THAT Defendant's Motion for Summary
Judgment (D.I. 415) is DENIED.
court shall grant summary judgment if the movant 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. Crv. P. 56(a). When determining whether a genuine issue of
material fact exists, the court must view the evidence in the
light most favorable to the non-moving party and draw all
reasonable inferences in that party's favor. Scott v.
Harris, 550 U.S. 372, 380 (2007); Wishkin v.
Potter, 476 F.3d 180, 184 (3d Cir. 2007). A dispute is
"genuine" only if the evidence is such that a
reasonable jury could return a verdict for the non-moving
party. Anderson v. Liberty Lobby, 477 U.S. 242,
written description requirement contained in 35 U.S.C. §
112, ¶ 1 requires that the specification "clearly
allow persons of ordinary skill in the art to recognize that
[the inventor] invented what is claimed." Ariad
Pharm., Inc., v. Eli Lilly and Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc) (alteration in original) (internal
quotation marks omitted). "In other words, the test for
sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art
that the inventor had possession of the claimed subject
matter as of the filing date." Id. The written
description inquiry is a question of fact. See Id.
Although it is a question of fact, "[c]ompliance with
the written description requirement... is amenable to summary
judgment in cases where no reasonable fact finder could
return a verdict for the non-moving party."
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d
1299, 1307 (Fed. Cir. 2008). "A party must prove
invalidity for lack of written description by clear and
convincing evidence." Vasudevan Software, Inc. v.
MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015).
contends that claims 12-14, 16, and 18 of the '547 patent
are invalid under 35 U.S.C. § 112, ¶ 1 because
these claims "are broad enough to encompass dynamic
logic circuits that do not have any overlap at all" in
the activation of the precharge and evaluation
transistors.(D.I. 416 at 14). According to Defendants,
since the specification only discloses dynamic logic circuits
that include overlap, these claims are broader than the scope
of the invention disclosed in the specification.
(Id. at 15). Plaintiff responds by pointing to
statements made by its expert, Dr. Wolfe, in his expert
report. (D.I. 490 at 13). Dr. Wolfe analyzed the language of
the claims and the specification and opined that 1) a person
of ordinary skill in the art would have understood the claims
to include circuitry necessary to achieve overlap; and 2)
even if the claims are read to include circuits having little
or no overlap, the patent "nevertheless clearly conveys
that the inventors possessed the full scope of the asserted
claims." (D.I. 444-1 at 929-70).
also contends that claims 1-5, 9, and 19 are invalid under
§ 112, ¶ 1 because the claims "are broad
enough to encompass circuits in which the overlap occurs only
during the precharge phase and never during the evaluation
phase." (D.I. 416 at 16). Defendants argue that these
claims are over broad because the invention, as disclosed in
the specification, must include overlap during the evaluation
phase. (Id.). Plaintiff responds by citing to Dr.
Wolfe's report. (D.I. 490 at 18). Dr. Wolfe opined that
"once the evaluation transistor is activated, there by
definition is no precharge phase." (DI 441-1 at 965).
Therefore, according to Dr. Wolfe, "it is difficult to
see how [these claims] would ever even encompass the scenario
where simultaneous activation occurs during the precharge
further argues that method claim 21 is invalid under §
112, ¶ 1 because this claim "is broad enough to
encompass circuits in which the evaluation transistor is not
located between the precharge transistor and the logic block
and thus does not isolate the logic block from the precharge
node." (D.I. 416 at 18). According to Defendant, this is
broader than the scope of the invention because both the
specification and the Court's claim construction require
isolation of the logic block from the precharge node.
(Id. at 17-18). Plaintiff responds by again pointing
to Dr. Wolfe's expert report. (D.I. 490 at 18). As to
claim 21, Dr. Wolfe again analyzed the claim language and
specification and opined that, "The disclosure would
have clearly conveyed to one of ordinary skill in the art
that the inventors were in possession of the claimed
steps." (D.I. 441-1 at 969).
also argues that claims 12-14, 16, and 18 are invalid for the
same reasons it argued claim 21 was invalid if the
"between" limitation in claim 12 is construed as
Plaintiff has proposed. (D.I. 416 at 19). I have now
construed this term and adopted Defendant's proposed
construction. Therefore, this argument is moot.
seems to me that Plaintiff has pointed to sufficient evidence
in the record in response to each of these arguments to raise
a genuine dispute of material fact. I cannot say that a
reasonable fact finder could not find for Plaintiff on these
issues. Therefore, Defendant's Motion for Summary
Judgment of Invalidity is denied as to the § 112, ¶
also argues that claims 1-7, 9, and 19-21 of the '547
patent are invalid under 35 U.S.C. §112, ¶ 2 as
indefinite. (D.I. 416 at 20). "[A] patent is invalid for
indefmiteness if its claims, read in light of the
specification delineating the patent, and the prosecution
history, fail to inform, with reasonable certainty, those
skilled in the art about the scope of the invention."
Nautilus, Inc. v. Biosig Instruments, Inc., 134
S.Ct. 2120, 2124 (2014). Defendant's argument centers on
the so-called 30/70 method by which Plaintiffs expert
determined whether Defendant's products include
"simultaneous activation, " a method Defendant
argues is arbitrary and not disclosed in the patent. (D.I.
416 at 22). If this is the method by which "simultaneous
activation" is determined, Defendant contends, "it
would be impossible to determine with reasonable certainty
whether a given product meets the claims."
(Id.). Defendant also notes that Plaintiff now
argues that the products accused in the previous litigation,
between the same parties and related to the same patent, do
not satisfy this limitation when the 30/70 method is used, a
position contrary to Plaintiffs infringement contentions in
the previous litigation. (Id. at 23). This,
according to Defendant, supports their argument that a person
of ordinary skill would not be able to determine the scope of
what is claimed. (Id.).
first complains that Defendant's disclosure of this
invalidity defense is untimely. (D.I. 490 at 21). Defendant
responds that the defense is timely because Plaintiff only
disclosed the 30/70 method, which forms the basis of
Defendant's invalidity argument, in Plaintiffs
infringement report. (D.I. 534 at 11). Defendant's expert
opined on this method as early as reasonably possible, in
Defendant's invalidity reply report. (Id.). I
agree with Defendant that the disclosure of this defense is
timely. Furthermore, I fail to see any prejudice to
Plaintiff. It is not as though this defense was only
disclosed on the eve of trial. Rather, the invalidity reply
report was served on Plaintiff prior to Plaintiffs deposition
of Defendant's expert and prior to Plaintiff s service of
its own expert's supplemental report. (Id.).
Defendant's objection to the 30/70 method, while I agree
that this method is not disclosed in the specification, I am
not persuaded that Plaintiffs use of an undisclosed method of
determining simultaneous activation in order to prove
infringement is a basis for arguing that the claims are
indefinite. It seems to me that there are two unrelated
issues in play in the parties' briefing: first, whether
Plaintiffs expert's method of showing infringement is
scientifically sound; and second, whether the patent provides
sufficient notice as to the scope of the invention. The first
issue is wholly unrelated to whether the claims are
indefinite. As to the second issue, Defendant has not argued
that a person of ordinary skill would not understand what is
meant by "simultaneous activation." Instead,
Defendant focused on the shortcomings of Plaintiff s 30/70
method of determining simultaneous activation. Therefore, the
claim is definite within the meaning of § 112, ¶2.
Defendant's Motion for Summary Judgment of Invalidity is
denied as to the § 112, ¶2 argument.
reasons given above, I deny Defendant's Motion for
Summary Judgment of Invalidity Under 35 U.S.C. § 112.