Access Solutions Intern. v. Data/Ware Development

• Court: U.S. District Court — District of Rhode Island
• Writing for the Court: Lagueux
• Citation: Access Solutions Intern. v. Data/Ware Development, 70 F.Supp.2d 92 (D. R.I. 1999)
• Decision Date: 10 November 1999
• Docket Number: No. 97-0501-L.,97-0501-L.
• Parties: ACCESS SOLUTIONS INTERNATIONAL, INC., Plaintiff, v. DATA/WARE DEVELOPMENT, INC. and Eastman Kodak Company, Defendants.

Page 92

70 F.Supp.2d 92

ACCESS SOLUTIONS INTERNATIONAL, INC., Plaintiff, v. DATA/WARE DEVELOPMENT, INC. and Eastman Kodak Company, Defendants.

No. 97-0501-L.

United States District Court, D. Rhode Island.

November 10, 1999.

Mark W. Freel, Edwards & Angell, Providence, RI, Michael M. deAngeli, Rockville, MD, Gary S. Winter, St. Onge Steward Johnston & Reens, Stamford, CT, for plaintiff.

Andrew B. Prescott, Nixon Peabody LLP, Providence, RI, John Allcock, Steward M. Brown, Gray, Cary, Ware & Freidenrich, San Diego, CA, for defendant.

DECISION AND ORDER

LAGUEUX, Chief Judge.

Access Solutions International, Inc. ("plaintiff") has sued Data/Ware Development, Inc. and Eastman Kodak Company ("defendants") for infringement of two patents held by plaintiff — U.S.Patent nos. 4,775,969 ("'969 patent") and 5,034,914 ("'914 patent"). Defendants have moved for summary judgment on three grounds: 1) that the '969 patent is invalid because it violates the best mode requirement of 35 U.S.C. § 112, 2) that it is invalid because it violates the enablement requirement of 112 and 3) that an amendment added during the patent's prosecution impermissibly contained "new matter" in violation of 35 U.S.C. § 132. If either defendants' best mode theory or enablement theory is sustained, then that would dispose of the '969 patent infringement action. However, because this Court concludes that there are genuine issues of material fact with regard to both theories, defendants' motion for summary judgment on these grounds must be denied. With regard to the "new matter" argument, this Court finds that the issue is not appropriate for summary judgment, as its resolution would have no dispositive effect on any issue in the case.

I. Background

Description of the Invention

Both the '969 and the '914 patents are "directed to Optical Disk Storage systems and [are] more particularly directed to a new and improved embedded directory technique for storing data on an optical disk to permit rapid access thereto." '969 patent, Col. 1, 11. 12-15; '914 patent, Col. 1, 11. 12-15. Prior to the invention, data from a host computer was stored on a magnetic tape drive. Records containing variable numbers of data bytes were written from the host computer to the tape in a sequential fashion and separated by "file marks." When data needed to be retrieved, the host computer would issue commands to move from one file mark to the next until the appropriate record was located.

An optical disk, unlike a magnetic tape drive, has a single spiral "track" which is divided into "sectors." Each sector can store approximately 1,024 bytes of data. Reading and writing operations can begin only at a sector location. Using the sequential method of data storage described above thus would be inefficient because each sector would necessarily need to correspond to only one record, resulting in incomplete usage of the sector.

One of the purposes of the invention at issue was to store variable-length data efficiently on an optical disk. Another purpose was to achieve this storage by emulating the communication interface utilized when data was stored on magnetic tape drives. This would allow the invention to be used with existing host computers without the need for additional software, which would have been commercially undesirable. This is known as "tape emulation."¹

To achieve these goals, the invention consists of a communication interface which employs a host computer, a tape drive interface, a buffer memory, an optical disk interface, an optical disk system and a controller. In a write operation, the host computer, using the same format and commands utilized to write to a magnetic tape drive, transmits a series of records to the buffer memory through the tape drive interface. The controller constructs an "embedded directory" in the buffer memory, which contains the record lengths (number of bytes) of the records to be stored. The controller then writes the data and the corresponding embedded directory to the optical disk through the optical disk interface. While this is occurring, the controller generates information to construct a "high-level directory" in the buffer memory, the purpose of which is to note the disk address of the embedded directory. Once the high-level directory is completed, it is written to the optical disk. In a read operation, the host computer accesses the high-level directory, again using the same format and commands used to retrieve data from a magnetic tape drive, to determine the disk address of the appropriate embedded directory. Once the record length information in the embedded directory is accessed, bytes of data are counted in accordance with the information to access the desired record.

Prosecution of the '969 Patent

Both patents originated from a patent application filed on May 15, 1986. On April 13, 1987, a continuation-in-part ("CIP") application to the May 15 application was filed. ("April 13th application"). In August of 1987, the U.S.Patent and Trademark Office ("PTO") issued an Office Action rejecting all of the claims of the April 13th application under paragraph two of 35 U.S.C. § 112, "as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention." PTO Office Action (attached as Ex. 6 to Defs'. Mot. for Summ.J. that the '969 Patent Violates the New Matter and Enablement Rules ("Defs'. New Matter and Enablement Motion")).

On February 29, 1988, an amendment was filed which contained changes to the patent specification. ("Substitute Specification"). The PTO accepted the amendment, noting that it "does not appear to have any new matter." PTO Examiner Interview Summary Record (attached as Ex. 11 to Defs'. New Matter and Enablement Motion). The '969 patent, containing the changes made by the Substitute Specification, was thus issued on October 4, 1988. The '914 patent, not implicated in this motion, was issued on July 23, 1991, after a CIP to the '969 application was filed on June 16, 1988.

II. Procedural History

On August 29, 1997, plaintiff brought this infringement action against defendants, alleging infringement of one or more of claims 1, 4, 6, 13 and 18 of the '969 patent and one or more of claims 1 and 4 of the '914 patent. On April 7, 1999, defendants filed two motions for summary judgment relative to the '969 patent infringement action. The first alleges that the '969 patent violates the best mode requirement of 35 U.S.C. § 112 and, thus, is invalid. The second alleges that the '969 patent violates the enablement requirement of 35 U.S.C. § 112 and the "new matter" prohibition contained in 35 U.S.C. § 132.

III. Summary Judgment

Although defendants have not clarified this point, this motion is properly considered under Rule 56(d) as a motion for partial summary judgment. Even if defendants succeeded on their motion, they would only be entitled to resolution of the infringement allegations with regard to the '969 patent; the allegations regarding the '914 patent would still go forward. Rule 56(d) addresses this type of case where the movant requests less than full relief.

Partial summary judgment under Rule 56(d) is separate and distinct from a motion for summary judgment under Rule 56(c), although the two are often improperly interchanged. Rule 56(d) arms the court with a tool to "narrow the factual issues for trial." Rivera-Flores v. Puerto Rico Tel. Co., 64 F.3d 742, 747 (1st Cir. 1995). The rule provides that when "judgment is not rendered upon the whole case or for all the relief asked and a trial is necessary," the court may "ascertain what material facts exist without substantial controversy and what material facts are actually and in good faith controverted." Fed.R.Civ.P. 56(d). Based upon such an inquiry, the court may then devise an appropriate order "including the extent to which the amount of damages or other relief is not in controversy, and directing such further proceedings in the action as are just." Id.

The standard for ruling on a Rule 56(d) motion is "identical to that deployed when considering a summary judgment motion under Rule 56(c)." URI Cogeneration Partners, L.P. v. Board of Governors for Higher Educ., 915 F.Supp. 1267, 1279 (D.R.I.1996) (citing Flanders & Medeiros Inc. v. Bogosian, 868 F.Supp. 412, 415-417 (D.R.I.1994), aff'd in part, rev'd in part, 65 F.3d 198 (1st Cir.1995)). Rule 56(c) of the Federal Rules of Civil Procedure sets forth the standard for ruling on a summary judgment motion:

The judgment sought shall be rendered forthwith 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 a judgment as a matter of law.

Fed.R.Civ.P. 56(c). Thus, summary judgment may be granted when no "reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). In determining whether summary judgment is appropriate, the Court must view the facts on the record and all inferences therefrom in the light most favorable to the nonmoving party. See Continental Cas. Co. v. Canadian Universal Ins. Co., 924 F.2d 370, 373 (1st Cir.1991).

A grant of summary judgment "is not appropriate merely because the facts offered by the moving party seem most plausible, or because the opponent is unlikely to prevail at trial." Gannon v. Narragansett Elec. Co., 777 F.Supp. 167, 169 (D.R.I. 1991). At the summary judgment stage, there is "no room for credibility determinations, no room for the measured weighing of conflicting evidence such as the trial process entails, no room for the judge to superimpose his own ideas of probability and likelihood[.]" Greenburg v. Puerto Rico Maritime Shipping Auth., 835 F.2d 932, 936 (1st Cir.1987). Summary judgement is only available when there is no...