Magsil Corp. v. Hitachi Global Storage Techs., Inc.

• Decision Date: 14 August 2012
• Docket Number: No. 2011–1221.,2011–1221.
• Citation: 103 U.S.P.Q.2d 1769,687 F.3d 1377
• Parties: MAGSIL CORPORATION and Massachusetts Institute of Technology, Plaintiffs–Appellants, v. HITACHI GLOBAL STORAGE TECHNOLOGIES, INC., Hitachi America, Ltd., Hitachi Data Systems Corporation, and Shenzhen Excelstor Technology Ltd., Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

687 F.3d 1377

103 U.S.P.Q.2d 1769

MAGSIL CORPORATION and Massachusetts Institute of Technology, Plaintiffs–Appellants,

v.HITACHI GLOBAL STORAGE TECHNOLOGIES, INC., Hitachi America, Ltd., Hitachi Data Systems Corporation, and Shenzhen Excelstor Technology Ltd., Defendants–Appellees.

No. 2011–1221.

United States Court of Appeals, Federal Circuit.

Aug. 14, 2012.

Steven J. Pollinger, McKool Smith, P.C., of Austin, TX, argued for the plaintiffs-appellants. With him on the brief were Craig N. Tolliver, Joel L. Thollander and Lilan Ren. Of counsel on the brief were Jack B. Blumenfeld and Rodger D. Smith, II, Morris, Nichols, Arsht & Tunnell LLP, of Wilmington, DE.

Edward R. Reines, Weil, Gotshal & Manges LLP, of Redwood Shores, CA, argued for defendants-appellees. Of counsel on the brief were Douglas E. Lumish, Jeffrey G. Homrig and Lawrence Okey Onyejekwe, Jr., Kasowitz, Benson, Torres & Friedman, LLP, of San Francisco, CA. Of counsel was Frederick L. Cottrell, III, Richards, Layton & Finger, PA, of Wilmington, DE.

Before RADER, Chief Judge, O'MALLEY and REYNA, Circuit Judges.

RADER, Chief Judge.

The United States District Court for the District of Delaware granted summary judgment that claims 1–5, 23–26, and 28 of U.S. Patent No. 5,629,922 (“the '922 patent”) are invalid for a lack of enablement. MagSil Corp. v. Seagate Tech., 764 F.Supp.2d 674 (D.Del.2011). Because the record supports the trial court's judgment, this court affirms.

I.

Appellant Massachusetts Institute of Technology is the assignee of the '922 patent and appellant MagSil Corporation is the patent's exclusive licensee. The application leading to the '922 patent was filed in March 1995 and issued in May 1997. The patent claims read-write sensors for computer hard disk drive storage systems. Hard disk drives store digital data in microscopic magnetic patterns on the surface of spinning platters, or disks, inside the drive.

Image 1 (4.48" X 2.85") Available for Offline Print

As shown in Fig. 1, the '922 patent's sensor uses a quantum mechanical effect where electric current can pass, or “tunnel,” from one electrode (e.g., 10) through a thin insulating barrier layer (14) into a second electrode (e.g., 12). '922 patent col. 1 ll. 17–21, col. 3 l. 53–col. 4 l. 29.

With two ferromagnetic electrodes, a tri-layer tunnel junction requires the current flow to depend on the magnetization direction of the electrodes. The junction resistance is higher when the magnetization direction of one electrode (e.g., 28 in 10) is antiparallel (i.e., having the opposite direction) to that of the other electrode (e.g., 28 in 12) and lower when the directions are parallel. Id. at col. 1 ll. 28–31. Therefore, the tunnel junction resistance changes with a change in magnetization direction. Id. at col. 2 ll. 18–22.

The '922 patent claims both a method of manufacturing a tri-layer tunnel junction and the junction itself. The asserted claims, however, only claim the tunnel junction device. Claim 1 is representative of the two asserted independent claims and reads:

1. A device forming a junction having a resistance comprising:

a first electrode having a first magnetization direction,

a second electrode having a second magnetization direction, and

an electrical insulator between the first and second electrodes, wherein applying a small magnitude of electromagnetic energy to the junction reverses at least one of the magnetization directions and causes a change in the resistance by at least 10% at room temperature.

Id. at col. 8 ll. 43–54 (emphasis added).

According to the background section of the '922 patent's specification, scientists had known “for many years” the basic theory underlying “tunnel resistance arising from conduction electron spin polarization.” Id. at col. 2 ll. 3–5. Past efforts, however, failed to “produce an adequate level of change in the tunneling resistance (?R/R)” for practical applications. Id. at col. 2 ll. 5–8. At room temperature, these past efforts had obtained only a 2.7% change in resistance. Id. at col. 1 ll. 60–67. The '922 invention, by contrast, achieved a “ten percent change in the tunneling resistance with respect to magnetic field (H) variation”; in some cases “as much as 11.8% change was seen.” Id. at col. 2 ll. 44–51.

The specification further teaches that

[t]his increase in OR/R is believed to depend, inter alia, on a decrease in surface roughness, which apparently directly couples the two electrodes ferromagnetically. Also, the quality of the intervening insulator between the [electrodes] is significantly improved over the prior art devices. This is believed to be important in keeping the surface integrity of the [electrodes].

Id. at col. 2 ll. 51–58. The asserted claims, however, do not include the process steps of fabricating the device and require neither smoother layers nor a specifically improved insulator. The specification also explains manufacture of the tri-layer tunnel junction and ways to incorporate this device into read-write sensor heads for data storage. Id. at col. 3 l. 52–col. 4 l. 38, col. 6 l. 66–col. 8 l. 36.

MagSil filed suit in December 2008 against several defendants including Hitachi Global Storage Technologies, Inc., Hitachi America, Ltd., Hitachi Data Systems Corporation, and Shenzhen Excelstor Technology, Ltd. (collectively, “Hitachi”), alleging that their disk drive products infringe the '922 patent. The non-Hitachi defendants have since been dismissed from the case. Chief Judge Harvey Bartle III, sitting by designation from the United States District Court for the Eastern District of Pennsylvania, handled this litigation. After Markman proceedings, the parties filed cross-motions for summary judgment. The district court found the asserted claims invalid as a matter of law for lack of enablement. The district court entered its final judgment for Hitachi and MagSil timely appealed to this court, which has jurisdiction under 28 U.S.C. § 1295(a)(1).

II.

This court reviews a district court's grant of summary judgment without deference, “drawing all reasonable inferences in favor of the nonmovant.” Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 620 F.3d 1287, 1295 (Fed.Cir.2010) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)); see alsoFed.R.Civ.P. 56(c). Enablement is a question of law based on underlying factual findings. In re Wands, 858 F.2d 731, 735 (Fed.Cir.1988). A party must prove invalidity based on nonenablement by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, ––– U.S. ––––, 131 S.Ct. 2238, 2242, 180 L.Ed.2d 131 (2011); AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238–39 (Fed.Cir.2003). Thirty-five U.S.C. § 112 sets forth the enablement requirement:

[t]he specification shall contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.

35 U.S.C. § 112, ¶ 1. “To be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’ ” Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1365 (Fed.Cir.1997) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed.Cir.1993)). The enablement determination proceeds as of the effective filing date of the patent. Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339 (Fed.Cir.2003).

Enablement serves the dual function in the patent system of ensuring adequate disclosure of the claimed inventionand of preventing claims broader than the disclosed invention. See AK Steel, 344 F.3d at 1244. This important doctrine prevents both inadequate disclosure of an invention and overbroad claiming that might otherwise attempt to cover more than was actually invented. Thus, a patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage. “The scope of the claims must be less than or equal to the scope of the enablement to ensure that the public knowledge is enriched by the patent specification to a degree at least commensurate with the scope of the claims.” Sitrick v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed.Cir.2008) (quoting Nat'l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed.Cir.1999)); see also In re Fisher, 57 CCPA 1099, 427 F.2d 833, 839 (1970) (“[T]he scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art.”).

The asserted claims of the '922 patent broadly claim any tri-layer tunnel junction device wherein “applying a small magnitude of electromagnetic energy to the junction ... causes a change in the resistance by at least 10% at room temperature.” '922 patent at col. 8 ll. 50–54. The district court construed the limitation “a change in resistance of at least 10%” as:

a change in resistance of at least 10% using the formula ?R/R = (R1-R2)/ R1, where ?R/R represents the percent change in resistance, R1 is the resistance of the junction before the application of electromagnetic energy reverses at least one of the magnetization directions, and R2 is the resistance of the junction after the application of electromagnetic energy and the resultant reversal of at least one of the magnetization directions.

MagSil Corp. v. Seagate Tech., No. 1:08–CV–0940, slip op. at 2 (D.Del. Mar. 1, 2011). The district court further found that the asserted claims cover “resistance changes beyond 120% and up to infinity.” MagSil Corp., 764 F.Supp.2d at 680. Thus, the specification at the time of filing must teach one of ordinary skill in the art to fully perform this method across that entire scope.

The record shows that MagSil advocated for a broad construction of this claim term. Its expert Dr....