Opinion
No. 2:01CV00312TC.
August 13, 2004
ORDER
This patent case involves two United States utility patents owned by Plaintiff EMC Corporation ("EMC"): (1) 5,649,152 (the "'152 Patent"); and (2) 6,073,222 (the "'222 Patent") (collectively, the '152 and the '222 Patents are referred to as the "Patents"). The Patents have a related file history. The '222 Patent is a continuation of a division of a continuation-in-part of the application that issued as the '152 Patent.
Background
The Patents claim a device, system, and method for obtaining a static image, or "snapshot" of electronic data that is stored on a mass storage system. The snapshot is then saved in another location, the preservation memory, before new data is placed in the mass storage system. Such a device, system, or method is used to preserve a copy of the electronic data before new data is written to the mass storage system thereby overwriting the original data. In other words, a computer user can use the device, system, or method to make a copy of a portion of a computer disk that is in use. This is called a "live backup" because it is done while write operations are ongoing, and the computer user experiences no delay.
EMC contends that two computer programs, OTM and PSM, marketed by Defendant Columbia Data Products, Inc. ("CDP"), infringe on various claims of the Patents.
On May 1, 2001, EMC (then known as Legato Systems, Inc.) filed this action alleging that OTM and PSM infringed the Patents. The case is currently before the court on the parties' eleven motions, nine of which are for summary judgment. The two remaining motions are non-dispositive motions: CDP's motion to amend the claim construction of "virtual device;" and its motion to strike the invalidity declaration of EMC's expert.
The original plaintiff was Legato Systems, Inc. ("Legato"), but EMC acquired that company during the course of this litigation, and EMC was subsequently substituted as the proper plaintiff.
On October 1, 2002, the court issued its claim construction order.
Analysis
I. Summary Judgment Standard.
Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250-51 (1986);Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 670 (10th Cir. 1998). A. Invalidity.
Patents are presumed valid, and a party seeking to have a claim declared invalid must present clear and convincing evidence of invalidity. State Contracting Eng'g Corp. v. Condotte Am., Inc., 346 F.3d 1057, 1067 (Fed. Cir. 2003). "Although not susceptible to precise definition, `clear and convincing' evidence has been described as evidence which produces in the mind of the trier of fact `an abiding conviction that the truth of [the] factual contentions are highly probable.'" Buildex, Inc. v. Kason Indus., Inc., 849 F.2d 1461, 1463 (Fed. Cir. 1988) (quoting Colorado v. New Mexico, 467 U.S. 310, 316 (1984)).
CDP claims that the Patents were anticipated, and are therefore invalid, under three subsections of 35 U.S.C. § 102 — 102(a), 102(b), and 102(g)(2).
Section 102 reads "A person shall be entitled to a patent unless —:"
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or . . . (g) . . . (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.35 U.S.C. § 102. Anticipation under § 102 requires "identity," which means that each claim element must be present in a single prior art reference. Hoover Group, Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 302 (Fed. Cir. 1995); SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1125 (Fed. Cir. 1985) (en banc). Identity has two requirements: (1) that the reference contain every element of the claim sought to be invalidated; and (2) that the reference is prior art, meaning that it was invented, published, known, used, sold or offered for sale before the applicable critical date. Furthermore, identity is a question of fact. Shatterproof Glass Corp. v. Libbey-Owens Ford, 758 F.2d 613, 619 (Fed. Cir. 1985).
CDP contends that two computer programs, SNAP (developed by Mr. Larry Ruane) and FreezeFrame (developed by Mr. Joseph Mayfield), anticipate the claims of the Patents.
The first identity question is whether all the elements of the claims sought to be invalidated are present in a single prior art reference. CDP's expert thoroughly examined a version of SNAP that Mr. Ruane testified existed as of May 12, 1993. The expert also examined a version of FreezeFrame identified in users' manuals dated November 1993 and January 1994. After an extensive element-by-element comparison between the claims of the Patents and the SNAP and FreezeFrame programs, CDP's expert concluded that both of these programs contained all of the elements of the challenged claims. (Muntz Aff., Ex. 1 at 2 (Invalidity Expert Report listing evaluated programs as "SNAP product code current as of May 12, 1993; . . . FreezeFrame User's Guide, Version 2.0, January 1994; [and] . . . FreezeFrame User's Guide, Version 1.1, November 1993); id. at Appx. A (containing element-by-element comparison between independent claims of Patent and SNAP and FreezeFrame).) EMC did not respond with a detailed element-by-element comparison of its own, but instead relied on conclusory statements by its own expert that SNAP and FreezeFrame did not contain some of the elements of the claims at issue. (EMC's Mem. in Opp., Ex. F, Nelson Decl. at ¶¶ 4, 6, and 7.) EMC's expert's statements are not enough to create a genuine issue of material fact as to the first identity requirement. Lawmaster v. Ward, 125 F.3d 1341, 1347 (10th Cir. 1997) ("The mere existence of a scintilla of evidence in support of the nonmovant's position is insufficient to create a dispute of fact that is `genuine.'").
Because the court finds the invalidity conclusions of EMC's expert as stated in his declaration do not present material issues of fact, CDP's motion to strike the declaration of Dr. Nelson is moot.
The second identity question is whether SNAP and FreezeFrame were invented, known, used, published, sold, or offered for sale before the applicable critical dates. In support of its argument that SNAP and FreezeFrame invalidate the Patents, CDP relies largely on the testimony of Mr. Ruane and Mr. Mayfield, together with various documents that it contends corroborates their testimony. Although not entirely clear, CDP appears to rely on the following documents and testimony for corroboration: (1) other witnesses' testimony; (2) the SNAP source code; (3) SNAP license agreements; (4) a newspaper "briefing" dated May 23, 1993; (5) an email message dated September 13, 1993; (6) a FreezeFrame user's guide dated November 1993; (7) a FreezeFrame user's guide dated January 1994; (8) a FreezeFrame user's guide dated January 1994; and (9) a press release dated March 17, 1993; and (10) a press release dated May 17, 1993. (CDP's Mem. in Supp. at Herrington Depo; id. at Stager Depo.; id. at Ex. 3 to Mayfield Depo.; id. at Exs. 1 and 3 to Ruane Depo.; id. at Ex. 3 to Stager Depo.; id. at Ex. 1 to Trimmer Depo.; Ruane Depo. at Ex. 9.)
1. § 102(a) and § 102(g)(2).
Initially, EMC argues that SNAP cannot be invalidating prior art under § 102(g)(2) because CDP's expert admitted (1) that he had not run SNAP on a computer, but had only reviewed the written source code, and (2) with a software program, one does not know how it will perform until the program is compiled and run on a computer. Under § 102(g)(2), a challenger has two ways to prove prior invention: (1) that the invention was conceived and reduced to practice before the patentee did so; or (2) that the invention was conceived by the inventor prior to the patentee, and the inventor exercised reasonable diligence in reducing that invention to practice. Mycogen Plant Science v. Monsanto Co., 243 F.3d 1316, 1332 (Fed. Cir. 2001). Furthermore, "[i]n order to establish an actual reduction to practice, the inventor must prove that: (1) he constructed an embodiment or performed a process that met all the limitations of the [claim]; and (2) he determined that the invention would work for its intended purpose." Id. EMC argues that by not running SNAP on a computer, Mr. Muntz failed to show that Mr. Ruane had reduced SNAP to practice because he had not shown that it worked for its intended purpose. In his deposition, however, Mr. Ruane necessarily, but perhaps implicitly, claims he made SNAP, ran it on a computer, and it worked as intended. (Ruane Depo. at 47-98.)
Accordingly, the court finds that a triable issue of fact exists as to whether Mr. Ruane reduced SNAP to practice, and denies CDP's § 102(g)(2) motion for summary judgment of invalidity on that basis.
At the core of the parties' §§ 102(a) and (g) dispute is whether SNAP or FreezeFrame was invented before the critical date, which under these sections is the invention date for the claimed invention. Here, the parties do not dispute that the relevant date is April or May 1994. Accordingly, to establish invalidity under § 102(a), CDP must show that SNAP or FreezeFrame was known or used in this country before April 1994. For invalidity under § 102(g)(2), CDP must show that SNAP or FreezeFrame was invented before April 1994.
Neither SNAP or FreezeFrame qualify as printed publications within the meaning of § 102(a) because CDP has not submitted clear and convincing evidence that either reference, in a form that revealed all the elements of the Patents, was disseminated and publicly available before the critical date. Constant v. Advanced Micro Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988), cert. denied, 488 U.S. 893 (1988).
Mr. Ruane, who developed SNAP, testified that the version of SNAP provided to CDP's expert Dr. Muntz was complete and both known and used in this country as of May 12, 1993. (Ruane Depo. at 92, 97.) The Federal Circuit has noted, however, that there is a "clear requirement" that oral testimony must be corroborated by documentary evidence. Lacks Indus. Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1350 (Fed. Cir. 2003). "Moreover, the need for corroboration exists regardless whether the party testifying concerning the invalidating activity is interested in the outcome of the litigation (e.g., because that party is the accused infringer) or is uninterested but testifying on behalf of an interested party." Finnigan Corp. v. Int'l Trade Comm'n, 180 F.3d 1354, 1367 (Fed. Cir. 1999).
Although CDP advances several documents as corroboration of Mr. Ruane's testimony, CDP's evidence is not sufficient to establish by clear and convincing evidence that SNAP anticipates the claimed invention. It is noteworthy that all of the documentary evidence submitted by CDP to corroborate Mr. Ruane's testimony depends upon Mr. Ruane for authentication and explanation.
There are also questions that a jury must resolve regarding FreezeFrame. All of the documentary evidence submitted by CDP in support of Mr. Mayfield's testimony depends on Mr. Mayfield for authentication and explanation.
Accordingly, the court denies CDP's motion for summary judgment on invalidity under §§ 102(a) and (g)(2). The court finds that a jury must decide whether SNAP and/or FreezeFrame anticipated the claims of the Patents under §§ 102(a) and (g)(2).
2. § 102(b).
"In order to invalidate a patent under the on-sale bar of 35 U.S.C. § 102(b), an accused infringer must demonstrate by clear and convincing evidence that there was a definite sale or offer to sell more than one year before the application for the patent and that the product sold or offered for sale anticipated the claimed invention or rendered it obvious." Minnesota Min. Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002).
The critical date for invalidity under § 102(b), is October 13, 1993 — one year before the filing of the '152 Patent application. CDP, however, has offered no persuasive evidence of actual sales or offers for sale of SNAP or FreezeFrame to specific customers before the critical date.
CDP argues that several documents demonstrate that SNAP was on sale generally in May 1993. These documents are the SNAP license agreements, a newspaper "briefing" dated May 23, 1993, and press release dated March 17, 1993.
CDP's § 102(b) argument is not persuasive. The license agreement is both undated and unexecuted. (Ruane Depo., Ex. 9.) There is no evidence about the parties involved in the alleged sale or offer for sale, or when such a sale occurred. Further, CDP has put forth no evidence of any communications that would rise to the level of an offer for sale, nor has it demonstrated how any such communications would satisfy the contract-formation requirements of the Uniform Commercial Code ("UCC"). Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041, 1048 (Fed. Cir. 2001) (courts should "look to the [UCC] to define whether . . . a communication or series of communications rises to the level of a commercial offer for sale").
The May 23, 1993 newspaper briefing and the press release are also not evidence of an offer for sale or sale of SNAP between two parties before the critical date. Again, CDP has offered no evidence of any communications surrounding these documents that would rise to the level of an offer for sale, nor has it demonstrated how any such communications would satisfy the UCC's contract-formation requirements. Further, promotion or marketing activities that do not rise to the level of an offer for sale or sale under the UCC cannot invalidate a patent under § 102(b).Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040, 1049 (Fed. Cir. 2001).
Accordingly, the court finds that neither SNAP nor FreezeFrame was sold or offered for sale prior to the § 102(b) critical date, and denies CDP's motion for summary judgment of invalidity under § 102(b).
3. The Other Invalidity Motions.
a. CDP's 35 U.S.C. § 282 Disclosure.
Under 35 U.S.C. § 282, a party asserting patent invalidity must inform the patentee as to what references will be relied on in attempting to prove invalidity. Here, EMC has moved for an order that six references that CDP asserted as invalidating prior art are in fact not prior art as printed publications under §§ 102(a) and (b), or under the on-sale bar of § 102(b). CDP has admitted that two of the six references are not prior art, and now only the following four references are at issue: (1) September 1992 IBM Technical Disclosure Bulletin Titled "Storage Management Mechanism for Managing Snapshot Pages;" (2) FreezeFrame Software from March 17, 1993; (3) FreezeFrame Software User's Guide from 1993; and (4) SNAP Software from May 17, 1993. (EMC's Mem. in Supp. (269) at Exs. A, E, and H.)
The first issue is whether references one and three are printed publications that can invalidate the Patents under §§ 102(a) or (b). CDP argues that these references are printed publications, while EMC argues they are not.
"`[P]rinted 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 of whether a prior art reference was `published.'"Constant v. Advanced Micro Devices, Inc., 848 F.2d 1560, 1568 (Fed. Cir. 1988), cert. denied, 488 U.S. 892 (1988). Additionally, printed publications must enable one skilled in the art to practice the claimed invention without further research or experimentation. Id.; Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1347 (Fed. Cir. 2000).
CDP has provided no evidence that reference one, the IBM Technical Disclosure Bulletin, was disseminated to the public. CDP has not produced any documentation about how and when this document was released, nor has it produced any person to testify to that effect. Similarly, as for reference three, the FreezeFrame Software User's Guide, CDP points to nothing that would establish when and how this document was released into the public domain. Mr. Mayfield, the developer of FreezeFrame, had no knowledge, other than by referring to the date on the cover of the document itself, that this document was ever released to anyone.
The second issue is whether references two and four were sold or offered for sale prior to the § 102(b) critical date. CDP apparently concedes that FreezeFrame was not sold or offered for sale prior to the critical date, but does argue that SNAP was offered for sale before that date. EMC argues that neither program was sold or offered for sale prior to the critical date.
As set forth in detail above, CDP has provided no evidence that either SNAP or FreezeFrame was sold, or offered for sale. Accordingly, the court grants EMC's motion to the extent that references one and three are not printed publications and cannot invalidate the Patents under §§ 102(a) and (b), and references two and four were not sold or offered for sale, and cannot invalidate the Patents under § 102(b).
b. EMC's Disclosures to the United States Patent and Trademark Office.
CDP contends that EMC failed to disclose a relevant reference — the IBM Technical Disclosure Bulletin — to the United States Patent and Trademark Office ("USPTO") during the prosecution of the '222 Patent. According to CDP, this demonstrates inequitable conduct by EMC and renders the '222 Patent unenforceable. EMC counters that this reference is merely cumulative of other references submitted to the USPTO in two parent applications of the '222 Patent, applications which the '222 patent incorporates by reference.
The '222 Patent is a continuation of the application that issued as United States Patent No. 6,085,298 (the "'298 Patent"), which is itself a division of the application that issued as United States Patent No. 5,835,953 (the "953 Patent"). The '953 Patent is a continuation-in-part of the application that issued as the '152 Patent, and the '953 Patent application incorporates by reference the '152 Patent application. Likewise, the '298 Patent application incorporates by reference the '152 and '953 Patent applications, while the '222 Patent incorporates by reference the '152, '953, and '298 Patent applications. See Legato Systems, Inc. v. Columbia Data Products, Inc., 2:01CV312TC slip op. at 2 (D. Utah Oct. 2, 2002).
Inequitable conduct requires that a party show "evidence of affirmative misrepresentations of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive." Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed. Cir. 2001). The inequitable conduct test has two steps: (1) "a determination of whether the withheld reference meets a threshold level of materiality and intent to mislead;" and (2) "a weighing of the materiality and intent in light of all the circumstances to determine whether the applicant's conduct is so culpable that the patent should be held unenforceable." Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1362-63 (Fed. Cir. 2003) (citations and quotations omitted).
Under 37 C.F.R. § 1.56, "information is material to patentability when it is not cumulative of information already of record or being made of record in the application." See also J.P. Stevens Co., Inc. v. Lex Tex, Ltd., 747 F.2d 1553, 1559-60 (Fed. Cir. 1984) (cumulative reference is not material),overruled on other grounds, 48 F.3d 1172 (Fed. Cir. 1995);Specialty Composites v. Cabot Corp., 845 F.2d 981, 992 (Fed. Cir. 1988) ("Failure to cite nonmaterial, cumulative references is not inequitable conduct.").
EMC argues, supported by its expert Dr. Nelson, that the IBM Technical Disclosure Bulletin is merely cumulative of the Cohn and Eastridge references, the latter of which was before the examiner in the '953 application, in all material respects. That is, the IBM Technical Disclosure Bulletin and Cohn and Eastridge differ only on points not relevant to the '222 Patent.
Although CDP concedes the Cohn reference is cumulative of the Eastridge reference before the examiner in the '953 Patent application, it responds through its expert by pointing to seven relevant features in the IBM document, at least one of which it apparently contends is missing in Cohn. As pointed out by EMC's expert, however, the Eastridge reference, United States Patent Number 5,241,670, discloses each of these seven features. (EMC's Rep. in Supp., Ex.2, United States Patent Number 5,241,670 at col. 5, ln. 48 to col. 6, ln. 38; id. at col. 7, lns. 28-68; EMC's Rep. in Supp., Ex. 7, Nelson's Supp. Decl. at ¶¶ 3-8.) Further, CDP's expert did not set forth the systems of Eastridge or Cohn to compare to the IBM document in an attempt to show that the IBM document discloses something that Eastridge and Cohn do not.
Therefore, the IBM Technical Disclosure Bulletin is cumulative over Eastridge. See Dayco, 329 F.3d at 1367 (holding no basis for inequitable conduct existed and reversing summary judgment when patentee presented expert evidence that reference was cumulative of prior art and opposing party merely argued otherwise). Accordingly, the court grants EMC's motion on this reference because EMC did not improperly withhold the IBM Technical Disclosure Bulletin as it was cumulative of other references already before the USPTO.
c. EMC's Maintenance Fees and Terminal Disclaimer.
CDP also alleges in its counterclaim that the Patents are invalid because EMC did not pay the necessary fees for the Patents, and EMC filed a false terminal disclaimer.
EMC and its predecessor in interest initially made payments as a small entity for the Patents. Later, recognizing that it was not a small entity, EMC made deficiency payments under 37 C.F.R. § 128(c). That section allows patentees to make deficiency payments when a mistake as to small-entity status is discovered. 37 C.F.R. § 128(c). EMC made the payments to the USPTO to cover its previous small entity fees paid by itself and its predecessor-in-interest for the Patents. In other words, EMC made payments that equate to full-price payments for the entire prosecution and maintenance periods of the Patents. The USPTO accepted these deficiency payments. (EMC's Mem. in Supp. (263), Ex. C at 1.)
Because the USPTO accepted the deficiency payments, the late fee payments cannot render the Patents invalid. As the Federal Circuit has stated, once the USPTO accepts the deficiency payment, the fee error is corrected, and the district court has no authority or duty to investigate whether the fee payment mistake was made in good faith.
[T]he PTO does not view section 1.28(c) as requiring it to make an inquiry into the patentee's good faith as a condition to accepting the late payment. Under such circumstances there is no basis to construe the regulation as mandating such an inquiry by the district court in order to determine whether the patent has expired, and we hold that a district court has no such obligation or authority. The submission of the deficiency fee payment, when accepted by the PTO, is effective to correct the patentee's error.Ulead Systems, Inc. v. Lex Computer Mgmt Corp., 351 F.3d 1139, 1150 (Fed. Cir. 2003).
EMC incorrectly filed a terminal disclaimer stating that its predecessor-in-interest, Vinca UT, actually owned the Patents. In fact, Vinca UT had already merged into EMC (Legato) when the terminal disclaimer was filed. The USPTO, however, allows attorneys-of-record to represent parties before the USPTO. This includes filing terminal disclaimers without any proof of chain of title for the owner. 37 C.F.R. § 34(a); 321(b)(1), and (c)(2); Manual of Patent Examining Procedure § 1490 at 1490-76 (8th ed. 2003). Here, the attorney of record did sign the terminal disclaimer. (EMC's Mem. in Supp., Ex. N at 3.)
Accordingly, because EMC corrected the deficient fee payments and EMC's attorney-of-record bound EMC with the terminal disclaimer, the court grants EMC's motion that neither its maintenance fee payments nor its terminal disclaimer can invalidate the Patents. B. Infringement.
To prove infringement, "the patentee must show that the accused device meets each claim limitation, either literally or under the doctrine of equivalents." Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc., 347 F.3d 1314, 1324 (Fed. Cir. 2003). EMC and CDP are currently only contesting infringement of claim 1 of both the '152 and '222 Patents. Furthermore, only certain elements of those claims are at issue.
1. Claim 1 of the '152 Patent.
The disputed limitation of claim 1 of the '152 Patent reads:
C) whenever a write operation to said mass storage system occurs, and said write operation specifies one of said unique write addresses for receiving at that unique address of the mass storage system a new block of data to be written to said mass storage system, then
(1) if and only if there is not already found within the preservation memory a copy of a block of data associated with said unique mass storage write address, then placing in said preservation memory a copy of the block of data located in said mass storage system at said unique mass storage write address prior to writing the new block of data in said mass storage system at that same address; and
(2) writing said new block of data to said mass storage system at the location specified by said unique mass storage write address only after the preceding step (1) has been performed at least once for a given unique mass storage write address[.]
(EMC's Mem. in Supp. (258), Ex. A, '152 Patent at col. 7, ln. 63 to col. 8, In. 13.)
a. The "if and only if" Limitation-OTM.
CDP argues that OTM does not perform the "if and only if" requirement of claim 1 because OTM saves data to the preservation memory without regard to whether a copy of the data from the particular location in the mass storage system is already in the preservation memory. This is so, according to CDP, because if any data from certain blocks of the mass storage system needs to be saved to the preservation memory, then all the data from those bocks is saved, not just the data at the block that must be preserved. The data blocks that did not need to be preserved are merely ignored.
EMC responds that claim 1 requires "placing" the data to be saved in the preservation memory. EMC defines "placing" as writing the data in the preservation memory for a particular location or block and then updating the program (the rbtree list) to recognize that the data at that particular location or block has been updated. According to EMC, because OTM ignores those blocks of data that are backed up unnecessarily, then OTM "places" that data that needs to be updated, and it is therefore practicing the invention of the '152 Patent.
In essence, CDP is arguing that placing means copying, while EMC contends that placing means copying and then updating the program so it can keep track of the data that has been preserved.
EMC points to the following passage from the specification in support of its contention:
Step 212 places a copy of the block of data currently located at the mass storage write address in preservation memory 106, updating block association memory 108 as necessary.
(EMC's Mem. in Supp. (258), Ex. A, '152 Patent at col. 5, Ins. 47-52 (emphasis added).)
Another passage from the specification outlines the process in similar terms:
In step 246, the data from the virtual device write operation is placed in preservation memory 106, associated with the virtual device write address from the virtual device write operation. Block association memory 108 is updated as necessary.
(EMC's Mem. in Supp. (258), Ex. A, '152 Patent at col. 6, Ins. 31-35 (emphasis added).)
In spite of EMC's arguments, the joint claim construction statement is clear. The parties agreed that "placing [data from the mass storage system in the] preservation memory" means "[c]opying the block of data from the mass storage system to the preservation memory." (Joint Claim Construction Statement (65) at 6.) Also, the specification leaves no question that updating is not required. It is only done "as necessary," and is clearly an optional additional step. As a result, placing means copying. Updating the block association memory is not required.
This result is consistent with the court's Markman Order, of October 1, 2002, in which the court defined "placing in said preservation memory . . . prior to writing" means that "[t]his operation involves a number of sub-steps that are performed by the computer. It is not necessary to complete all of the steps of the copy operation to preservation memory before writing the new block of data to the mass storage system." Nothing in this definition requires an update of the block association memory. On the contrary, all that is required is that the old data be copied into the preservation memory before the new data comes in to the mass storage system.
Accordingly, the court denies EMC's infringement motion as to OTM and claim one of the '152 Patent, and grants CDP's cross motion, because OTM does not satisfy the if and only if limitation of that claim.
b. The "if and only if" Limitation-PSM.
CDP argues that PSM operates in a manner that avoids reading on the "if and only if" step of claim 1 of the '152 Patent. CDP argues that PSM does not perform the "if and only if" step because it may have up to two different sets of data that are associated with the same block in the mass storage system. CDP points out that PSM can have two different blocks of data saved in the preservation memory, but associated with the same particular mass storage system location: the first resulting from a write to the virtual device (a write to a snapshot); and the second resulting from a backup of the mass storage system before data at the location in question is overwritten.
EMC argues there can only be two data blocks associated with one address if the user of the PSM program makes an affirmative selection to allow the program to write to the virtual device, which according to EMC, happens infrequently. EMC notes that CDP has offered no evidence that PSM has ever operated in this non-infringing manner, and in fact, that the PSM program CDP provided in discovery does not allow this to happen.
Here, there is a genuine issue of material fact as to whether PSM meets, under a literal infringement standard, the if and only if limitation of claim 1 of the '152 Patent. Although EMC argues, using its expert (EMC's Mem. in Opp. Ex. E, Nelson Decl. at ¶¶ 24-27), that the differences cited by CDP only occur if the computer user makes a rarely-used selection, CDP responds that the user-selection to which EMC refers has nothing to do with the differences between PSM and the '152 Patent. In fact, CDP contends that PSM in normal operation may have up to two different sets of data that are associated with the same block in the mass storage system. CDP's expert, Dr. Muntz, supports this contention. (Muntz Decl., Ex. 1, Rebuttal Expert Report at 13.) Accordingly, the court finds that a triable issue of fact remains as to whether PSM meets the if and only if limitation of claim one of the '152 Patent. The jury will decide this issue.
There is also a jury question as to whether PSM satisfies the if and only if step under the doctrine of equivalents ("DOE"). EMC's expert has opined that PSM satisfies the DOE function, way, and result test. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plogh Corp., 320 F.3d 1339, 1351 (Fed. Cir. 2003). According to EMC, both PSM and the if and only if step of claim 1 of the '152 patent serve the function of preventing original data from being lost when new incoming data overwrites the original data. (EMC's Mem. in Opp. Ex. E, Nelson Decl. at ¶ 29.) EMC argues that both achieve the result in the same way — copying the original data to a preservation memory. (Id.) Lastly, EMC argues that both achieve the same result — preserving original data. (Id.)
c. The "Virtual Device" Limitation.
Claim 1 of the '152 Patent claims a method for using a "virtual device" while performing the data preservation backup. The court construed a virtual device as "[a] device that appears as a mass storage device to all programs requiring access to the snapshot data." Legato Systems, Inc. V. Columbia Data Prods., Inc., 2:01CV312TC slip op. at 8 (D. Utah Oct. 1, 2002).
For the reasons set forth at the hearing on these motions, the court denies CDP's motion to amend the definition of virtual device. Consequently, CDP's argument that the definition of virtual device, as amended, prevents PSM from infringing claim 1 of the '152 Patent fails. b. Claim 1 of the '222 Patent.
CDP also makes this argument with respect to whether PSM infringes claim 1 of the '222 Patent. Because the issues are the same, the court's decision here with respect to whether PSM infringes claim 1 of the '152 Patent fully applies to whether PSM infringes claim 1 of the '222 Patent.
The disputed limitation of claim 1 of the '222 Patent reads:
preserving an original data block as it existed in the mass storage system at the selected moment by placing the original data block in the preservation memory when a new block written to the mass storage system is to overwrite the original data block after the selected moment[.]
(EMC's Mem. in Supp., Ex. B, '222 Patent at col. 31, Ins. 9-15.)
a. The "when" Limitation.
The "when" step of the '222 Patent requires that "when a new block written to the mass storage system is to overwrite the original data block" then the block that will be overwritten must be saved on the preservation memory.
CDP maintains that OTM does not satisfy this limitation because OTM includes two subroutines — "Otm_FreeRanges" and "Otm_FreeFiles" — that when used by other programs can operate to prevent the backup from occurring. At some time during the operation of the program, the Otm_FreeRanges and Otm_FreeFiles subroutines free unused blocks from the backup, and this, according to CDP, demonstrates that OTM does not meet the when limitation of claim 1 of the '222 Patent.
EMC disagrees, and points out that OTM meets the whenever limitation at least for the time period between the writing to the mass storage system and when the Otm_FreeRanges and Otm_FreeFiles subroutines are placed in operation. EMC also argues that OTM infringes after the subroutines start.
CDP's arguments are not convincing for several reasons. First, OTM's use of the Otm_FreeRanges and Otm_FreeFiles subroutines is optional and requires a third party application to invoke the subroutines. CDP has put forth no specific evidence that OTM always uses the subroutines, or how these subroutines are used. If a third party application does not call the subroutines, OTM performs the when step of the '222 Patent data preservation method.
Second, OTM does not use the Otm_FreeRanges and Otm_FreeFiles subroutines from the moment OTM is started. Rather, OTM still performs the when step until the subroutines are called to free certain blocks of data from preservation. Although CDP argues that the when step requires that OTM must operate without the subroutines at all times to infringe, it offers no support for this argument. Indeed, CDP ignores the fact that any write operations performed before the subroutines are called read on claim 1 of the '222 Patent. The write operation is merely the triggering event; when it happens, the backup takes place (if necessary). If this happens just once (such as before the subroutines are called), there is infringement.
Finally, after the subroutines are in use and blocks are freed, OTM still performs the whenever step if a write operation is triggered for even two of the non-freed-up blocks. In fact, OTM always performs the when step if a write operation is triggered for two of the blocks that are not free. In that case, the backup to the preservation memory occurs before the write to the mass storage system. Accordingly, the court finds that OTM meets the when limitation of claim 1 of the '222 Patent.
b. The Preservation Limitation.
CDP's argument here is similar to its argument on the Otm_FreeRanges and Otm_FreeFiles. CDP argues that its use of a "needs-caching" map — which allows PSM to determine if the mass storage system data block was previously storing data — prevents PSM from performing a backup on data that was not "in use" when the backup was triggered. In other words, CDP contends that PSM does not infringe because if the mass storage system data block was not previously storing data, nothing is saved to the preservation memory before the new data is written into it. Because claim 1 of the '222 Patent requires a backup regardless of whether the block is deemed to be "in use," CDP argues that PSM does not infringe.
Similar to its arguments on OTM and the operation of the Otm_FreeRanges and Otm_FreeFiles subroutines, EMC argues that PSM infringes before the needs-caching map is started. EMC argues that it takes a certain amount of time for PSM to build the needs caching map, and during that time PSM infringes.
CDP's arguments are again not persuasive. First, as before with OTM, PSM still performs the when step until the needs caching map is constructed.
Second, after the needs caching map is built and the in use blocks are designated (those needing preservation), PSM still performs the when step if a write operation is triggered for two of the in-use blocks. In that case, the backup to the preservation memory occurs before the write to the mass storage system.
Finally, after the needs caching map identifies those blocks that are in use, and those that are not in-use, PSM always performs the when step if a write operation is triggered for two of the in-use blocks. In that case, the backup is performed to the preservation memory before the write to the mass storage system occurs. Accordingly, the court finds that PSM meets the preservation limitation of claim 1 of the '222 Patent.
C. EMC's Motions for Summary Judgment Dismissing Defendant CDP's Fourth, Fifth, Sixth, Seventh, Eighth, and Ninth Counterclaims.
With two motions, EMC seeks summary judgment on CDP's fourth, fifth, sixth, seventh, eighth, and ninth counterclaims. CDP's fourth through eighth counterclaims are tort claims that center on a press release that EMC issued two days after EMC filed this lawsuit. CDP's ninth counterclaim is a false marking claim brought under 35 U.S.C. § 292. 1. CDP's Fourth Through Eighth Counterclaims — the Tort Claims.
CDP's fourth through eighth counterclaims allege five torts by EMC: (1) Lanham Act violation (fourth counterclaim); (2) unfair competition (fifth counterclaim); (3) tortious interference with economic relations (sixth counterclaim); (4) libel (seventh counterclaim); (5) negligence (eighth counterclaim). These counterclaims are based on the following EMC press release issued on May 3, 2001, two days after EMC brought this suit:
Legato Systems, Inc. . . . announced today that it has filed a patent infringement lawsuit against Columbia Data Products, Inc. (CDP) in the federal district court in Salt Lake City Utah. The lawsuit alleges that CDP is willfully infringing two patents held by Legato on the technology embedded in its SnapShot software, a data storage application. Legato has asked the court for an award of money damages as well as an injunction that would prohibit CDP from using, selling, or licensing software that infringes Legato's patents. The law firm of Workman, Nydegger Seeley of Salt Lake City, Utah, is representing Legato.
(EMC's Mem. in Supp. on the Fourth through Eighth Counterclaims (265), Ex. A. at 1.) EMC argues that this information became public when it filed the complaint, and the press release merely acknowledges the existence of the suit and the relief it seeks — all information that is public. The core of CDP's argument is that the press release was basically false because EMC officials knew '152 and '222 Patents were invalid.
EMC's arguments are persuasive when considering the counterclaims for libel and negligence. The information in the press release is merely public information and contains only the true statements that EMC has sued CDP and is seeking relief for "allege[d]" patent infringement by CDP. Expressing the truth cannot be the basis for a libel claim. Berry v. Moench, 331 P.2d 814, 816 (Utah 1958); c.f. Auto West, Inc. v. Baggs, 678 P.2d 286, 290 (Utah 1984) ("truth is an absolute defense in a slander action"). Moreover, CDP cannot prevail on its negligence claim because CDP cannot demonstrate that EMC breached a duty of care owed to CDP. What EMC did was release truthful information already in the public domain.
Moreover CDP's counterclaims alleging a Lanham Act violation, unfair competition, and tortious interference with economic relations also fail. Although CDP bases these claims in large part on its contention that EMC knew the Patents were invalid, CDP has failed to demonstrate that there is a material issue of fact as to essential elements of these claims.
Looking to the Lanham Act claim, the Federal Circuit has noted that:
there is no legal basis for a holding that inequitable conduct, or the assertion of a patent procured through inequitable conduct, constitutes unfair competition. . . . The only basis for a federal unfair competition claim is Section 43(a) of the Lanham Act. 15 U.S.C. § 1125(a)(1) (1994). That provision prohibits false designations of origin or false or misleading descriptions of goods or services which are likely to cause confusion. Obtaining a patent through inequitable conduct does not violate this statute.Pro-Mold and Tool Co., Inc. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1575 (Fed. Cir. 1996); see also Concrete Unlimited Inc. v. Cementcraft, Inc., 776 F.2d 1537, 1539 (Fed. Cir. 1985) (even when accused of improperly obtaining a patent, patent owner is entitled to enforce patent, including threatening infringers, until patent is held invalid); Symbol Technologies, Inc. v. Proxim Inc., 2003 WL 21840774 at *4 (D. Del. 2003) ("the court finds it hard to conclude that a single, brief press release, which is common in such actions, would be the sole cause of the failure of defendant's product line, particularly when dealing with parties as sophisticated in intellectual property matters as those in the relevant market"). CDP has put forth no evidence of "false designations or origin," "false or misleading descriptions of goods," or any evidence of confusion or likelihood of confusion. Accordingly, CDP's Lanham Act claim necessarily fails.
It is not clear whether CDP is asserting a state or federal cause of action regarding its claim of unfair competition. If CDP is asserting a federal cause of action, it must be brought under the Lanham Act, which the court has already discussed. If CDP is asserting a state law cause of action, CDP has not alleged facts sufficient to maintain a cause of action. In Utah, there are two types of unfair competition claims: (1) that a party is passing its products for that of another party; or (2) that a party is misappropriating the property of another party. Proctor Gamble Co. v. Haugen, 947 F. Supp. 1551, 1554 (Utah 1996); see also Symbol Technologies, 2003 WL 21840774 at *4 ("`[P]atentees do not violate the rules of fair competition by making accurate representations, and are allowed to make representations that turn out to be inaccurate provided they make them in good faith."') (quoting Golan v. Pingel Enter., 310 F.3d 1360, 1371 (Fed. Cir. 2002)). CDP has not provided evidence of either type of claim. It has presented no evidence that EMC has been passing its products for that of another, or that EMC has been misappropriating the property of another. As a result, CDP's unfair competition claim fails.
To succeed on its claim for tortious interference, CDP must prove that EMC's "predominant purpose" was to injure CDP. Leigh Furniture Carpet Co. v. Isom, 657 P.2d 293, 304 (Utah 1982). Again, CDP's claims that EMC knew the Patents were invalid and improperly secured them from the USPTO does not establish that EMC's predominant purpose was to injure CDP. At most, if CDP is correct that EMC improperly secured the Patents, EMC's predominant purpose was undoubtedly its own financial gain.
Moreover, to the extent the fourth, fifth, or sixth counterclaims rely on the press release, they also fail. "In general, a threshold showing of incorrectness or falsity, or disregard for either, is required in order to find bad faith in the communication of information about the existence or pendency of patent rights." Mikohn Gaming Corp. v. Acres Gaming, Inc., 165 F.3d 891, 897 (Fed. Cir. 1998). Here, as noted, the press release is not incorrect or false; it merely sets forth facts already in the public record.
Accordingly, the court grants EMC's motion on CDP's fourth through eighth counterclaims.
2. CDP's Ninth Counterclaim — the False Marking Claim.
CDP's ninth counterclaim alleges that EMC violated 35 U.S.C. § 292 ("§ 292") by marking its products with the Patents while knowing that the patents were invalid. Section 292 has four requirements: (1) that a party has marked an article; (2) that the party has made, used, sold, imported, or offered for sale; (3) with the patent number or the word "patent," etc.; (4) with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public. Further, there are three types of false marking claims: (1) counterfeit marking (use of the patent owner's mark without permission); (2) false patent marking (marking an article that is not covered by a patent); and (3) false patent pending marking (marking with "patent pending" when no patent application is pending). 35 U.S.C. § 292.
Section 292 reads:
Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words "patent," "patentee," or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word "patent" or any word or number importing that the same is patented for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article, the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public-Shall be fined not more than $500 for every such offense.35 U.S.C. § 292.
Importantly, § 292 is a penal statute and must be strictly construed. Clontech Labs., Inc. v. Invitrogen Corp., 263 F. Supp.2d 780, 791 (D. Del. 2003).
Here, only the second false marking claim, that EMC falsely marked its products with the Patents, is at issue. The first and third false marking claims do not apply because EMC cannot counterfeit its own patent, and a patent application was filed (several of them).
Whether EMC falsely marked its products with the numbers of the Patents is a material fact that must be decided by the jury. This decision is inexorably linked to the invalidity determination because the jury may only find false marking if it finds the Patents are invalid, and EMC knew they were invalid. Accordingly, the court denies EMC's motion for summary judgment on CDP's ninth counterclaim.
Conclusion
Based on the foregoing analysis, the court GRANTS:
(1) EMC's Motion for Partial Summary Judgment that the Non-Patent References Listed in the CDP's Section 282 Disclosure Are Not Prior Art to the Patents-in-Suit;
(2) EMC's Motion for Partial Summary Judgement that the Seven Unenforceability References Cannot, As a Matter of Law, Render the Patents-in-Suit Unenforceable;
(3) EMC's Motion for Partial Summary Judgement that Neither Allegedly Insufficient Fees Nor an Allegedly False Terminal Disclaimer Can, As a Matter of Law, Give Rise to Invalidity of the Patents-in-Suit; and
(4) EMC's Motion for Summary Judgement Dismissing CDP's Fourth, Fifth, Sixth, Seventh, and Eighth Counterclaims.
The court DENIES:
(1) CDP's Motion to Amend the Claim Construction of "Virtual Device";
(2) CDP's Motion for Partial Summary Judgment of Invalidity of the '152 and '222 Patents;
(3) CDP's Motion for Partial Summary Judgment of Non-Infringement of the '152 Patent and the '222 Patent by PSM;
(4) EMC's Motion for Summary Judgement Dismissing CDP's Ninth Counterclaim; and
(5) CDP's Motion to Strike the Declaration of Brent E. Nelson, Ph.D Concerning the Invalidity of the Patents-in-Suit.
The court GRANTS IN PART AND DENIES IN PART:
(1) EMC's Motion for Summary Judgment that PSM and OTM Literally Infringe the Patents in Suit; and
(2)(2) CDP's Motion for Partial Summary Judgment of Non-Infringement of the '152 Patent and the '222 Patent by OTM.
SO ORDERED.