Amp, Inc. v. Fujitsu Microelectronics, Inc.

• Decision Date: 25 April 1994
• Docket Number: Civ. A. No. 1:CV-93-361.
• Citation: 853 F. Supp. 808
• Parties: AMP, INCORPORATED, The Whitaker Corporation, Plaintiffs, v. FUJITSU MICROELECTRONICS, INC., Fujitsu Limited, Defendants.
• Court: U.S. District Court — Middle District of Pennsylvania

853 F. Supp. 808

AMP, INCORPORATED, The Whitaker Corporation, Plaintiffs, v. FUJITSU MICROELECTRONICS, INC., Fujitsu Limited, Defendants.

Civ. A. No. 1:CV-93-361.

United States District Court, M.D. Pennsylvania.

April 25, 1994.

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David E. Lehman, Harrisburg, PA, Jack C. Goldstein, Thomas A. Miller, J. Mike Amerson, Arnold, White & Durkee, Russell T. Wong, Arnold, White & Durkee, Houston, TX, for AMP, Inc., The Whitaker Corp.

William W. Warren, Jr., Saul, Ewing, Remick & Saul, Harrisburg, PA, Brian G. Brunsvold, Albert J. Santorelli, Don O. Burley, David L. Soltz, Donald C. Kordich, Roger D. Taylor, Finnegan Henderson Farabow, Garrett & Dunner, Washington, DC, for Fujitsu Microelectronics, Inc., Fujitsu Ltd.

MEMORANDUM

CALDWELL, District Judge.

We are considering Defendants' five motions, four for partial summary judgment, and one to determine that certain documents are not privileged, and Plaintiffs' three motions, one for partial summary judgment, one to compel, and one for a protective order. We exercise jurisdiction according to 28 U.S.C. § 1338.

I. Facts

This case revolves around U.S. Patent No. 4,762,500 (the "'500 patent"). The patent describes an electrical connector used to connect printed circuit boards in electronic systems.¹ Such connectors are often used in computer systems. Various computer components —such as chips—are mounted on circuit boards that provide physical support for the components and allow the different components on a given board to communicate with one another electronically. The product described in the '500 patent connects circuit boards, allowing electronic communication between components on separate circuit boards.

A circuit board connector can include a number of signal conductors, which actually relay electronic information between printed circuit boards. These relay information in a binary fashion, meaning that the information is transmitted in a series comprised of the numbers "1" and "0." In one example offered by Defendants, a five-volt current applied to a signal conductor might translate to a binary "1" while a zero-volt current (or ground) would represent a "0." Another part of the connector is what Defendant calls "a conductive portion." This pathway between circuit boards does not itself transmit information; rather, it maintains a constant current of electricity at a particular voltage, which is necessary to the proper functioning of the connector.²

When the signal to be transmitted is of high frequency, it is desirable to have "controlled impedance" through the length of the connector.³ A "matched impedance" connector is one in which the impedance of the connector approximates that of the printed circuit boards it connects. Impedance itself is at least in part a function of the geometry of the connector. The '500 patent describes three common electrical geometries—coaxial, microstrip, and stripline—that allow matched impedance.

The '500 patent discloses two embodiments of microstrip connectors, one for connecting printed circuit boards that are lying parallel to one another and one for connecting circuit boards that lie at right angles to one another. In both embodiments, the housing, contacts, and ground plane (or ground bus) portions of one half of the connector mate with the same three elements of the other connector half in a male-female connection. In the patented product, the rows of signal terminals are spaced apart from the ground plane by a layer of insulation known as dielectric material. In order to facilitate microstrip transmission with controlled impedance, the signal and ground conductors must be electronically parallel.

On December 4, 1986, Steven Feldman and Frank Dola filed patent application No. 937,797, which eventually led to the issuance of the '500 patent. The application included 30 claims.⁴ On May 4, 1987, the Patent and Trademark Office rejected all 30 claims because the examiner determined that they were obvious, 35 U.S.C. § 103, in light of the teachings of U.S. Patent No. 4,616,893 and other prior art references. Patent No. 4,616,893 (the "Feldman patent" or "'893 patent") had been issued to Mr. Feldman as the sole inventor.

Plaintiff AMP Incorporated ("AMP"), to whom the Feldman patent had been assigned and for whom Feldman and Dola filed the application for the '500 patent, responded to the rejection by arguing that the product claimed in the application was fully disclosed in the Feldman patent. Therefore, AMP argued, the new application did not describe an obvious invention and, in fact, deserved to be accorded the same filing date as the Feldman patent. See Defendant's Statement of Material Facts at ¶ 11. AMP also amended Claim 15 of the application (Claim 9 of the '500 patent) to avoid prior art by adding a requirement that the connector be comprised of mateable halves. Nearly two months later, the examiner withdrew his rejections based on the Feldman patent.

In an amendment after final rejection, mailed November 24, 1987, Claim 9 of the application (Claim 5 of the '500 patent) was amended to overcome a rejection that the claim was not enabling and that it did not particularly claim an invention. As with the prior amendment, this one primarily added the requirement that the connector be comprised of mateable halves.

The Feldman patent itself does not disclose a female mating bus portion for the connector. The parties agree that Mr. Dola conceived and invented the specific configuration of the opposed plates and spring means on the female bus bar shown in Figure 3 of the '500 patent. Plaintiffs, however, deny that Mr. Dola invented the basic notion that there should be a mating female bus bar; rather, they seem to argue that the general idea was Mr. Feldman's and that Mr. Dola conceived the particular configuration disclosed in the '500 patent. Additionally, Plaintiffs deny that the particular idea conceived by Mr. Dola is claimed in Claims 5 and 9 of the '500 patent.⁵ Further, Plaintiffs deny that Mr. Dola conceived or invented any of the matter claimed in Claims 5 and 9.

Plaintiffs AMP and The Whitaker Corporation claim that Defendants Fujitsu Microelectronics, Inc., and Fujitsu Limited (collectively, "Fujitsu") infringed the '500 patent.

II. Law and Discussion

A. Standard for Summary Judgment

Summary judgment is appropriate when there remain no genuine issues as to any material facts and judgment may be entered as a matter of law. Fed.R.Civ.P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When a movant submits that there is no genuine issue as to a material fact, its opponent must do more than "simply show that there is some metaphysical doubt as to the material facts." Matsushita Electric Industrial Co., Ltd., et al v. Zenith Radio Corp., et al, 475 U.S. 574, 586, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986).

B. Defendants' Motion for Partial Summary Judgment That Claims 5 and 9 of the '500 Patent Are Invalid According to 35 U.S.C. § 103 and Plaintiffs' Motion That Claims 5, 6, and 9-13 Are Not Invalid According to 35 U.S.C. § 103

Defendants argue that Claims 5 and 9 of the '500 patent are invalid because they are obvious according to 35 U.S.C. § 103.⁶ The essence of Defendants' motion is that the teachings of two prior art patents, the Feldman patent and the Japanese Utility Model No. 49-6543 ("Utility Model"), render Claims 5 and 9 obvious. Plaintiffs have filed a motion for partial summary judgment that Claims 5, 6, and 9-13 are not invalid for obviousness because of the teachings of the Feldman patent or those of a series of 1985 AMP presentations. To the extent Plaintiffs' motion refers to the Feldman patent, we consider it a cross-motion to Defendants' motion.

1. Obviousness

Both at common law and in the various patent statutes, there are three requirements for a patent: the product had to have utility, it had to be novel, and it had to be nonobvious (for an excellent discussion of these patent requirements, see Dorothy Whelan, A Critique of the Use of Secondary Considerations in Applying the Section 103 Nonobviousness Test for Patentability, 28 B.C.L.Rev. 357 (1987)). The utility requirement is found in the current statute at 35 U.S.C. § 101 and simply requires that the claimed invention be "new and useful." The novelty requirement is found in the numerous subsections of 35 U.S.C. § 102 and requires that the product be new and that the person who seeks the patent actually be the inventor. Finally, the nonobviousness requirement is found in 35 U.S.C. § 103 and requires that the product represent some level of inventiveness; to wit, that it would not have been obvious to a person of ordinary skill in the art with knowledge of the previous products in that field.

The requirement that an item to be patented be "nonobvious" is, in reality, a requirement that the item truly be an "invention," not simply something that logically follows previous inventions. Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248, 13 L.Ed. 683 (1851).

The United States Supreme Court laid down the appropriate test for obviousness in Graham v. John Deere, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

Under § 103, 1 the scope and content of the prior art are to be determined; 2 differences between the prior art and the claims at issue are to be ascertained; 3 and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as 4 commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.

Id. at 17-18, 86 S.Ct. at 694 (numbers added). The secondary considerations have become almost a fourth tier in the analysis. See, Kirk M. Hartung, `Prior Art': The...