Convolve, Inc. v. Compaq Computer Corp., 2012-1074

• Decision Date: 01 July 2013
• Docket Number: 2012-1074
• Parties: CONVOLVE, INC. AND MASSACHUSETTS INSTITUTE OF TECHNOLOGY, Plaintiffs-Appellants, v. COMPAQ COMPUTER CORPORATION, Defendant-Appellee, AND SEAGATE TECHNOLOGY, LLC AND SEAGATE TECHNOLOGY, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

CONVOLVE, INC. AND MASSACHUSETTSINSTITUTE OF TECHNOLOGY, Plaintiffs-Appellants,

v. COMPAQ COMPUTER CORPORATION, Defendant-Appellee,AND SEAGATE TECHNOLOGY, LLC AND SEAGATETECHNOLOGY, INC., Defendant-Appellee.

2012-1074

United States Court of Appeals for the Federal Circuit

Decided: July 1, 2013

NOTE: This disposition is nonprecedential.

Appeal from the United States District Court for the Southern District of New York in No. 00-CV-5141, Judge George B. Daniels.

DONALD R. DUNNER, Finnegan, Henderso, Farabow, Garrett & Dunner LLP, of Washington, DC, argued forplaintiffs-appellants. With him on the brief were ALLEN M. SOKAL and GARTH D. BAER. Of counsel on the brief were GREGORY A. MARKEL, JAMES T. BAILEY, MICHAEL P. DOUGHERTY and KEVIN J. MCNAMEE, Cadwalader, Wickersham & Taft LLP, of New York, New York. Of counsel was DEBRA B. STEINBERG.

CHRISTOPHER D. LANDGRAFF, Bartlit Beck Herman Palenchar & Scott LLP, of Chicago, illinois, argued for defendants-appellees. With him on the brief was MARK E. FERGUSON. Of counsel was VINCENT BUCCOLA, Bartlit Beck Herman Palenchar & Scott LLP, of Chicago, Illinois; CARTER G. PHILLIPS and ROBERT N. HOCHMAN, Sidley Austin LLP, of Washington, DC; and NATALIA V. BLINKOVA and BLAIR M. JACOBS, McDermott, Will & Emery LLP, of Washington, DC.

Before RADER, Chief Judge, DYK, and O'MALLEY, Circuit

Judges.

O'MALLEY, Circuit Judge.

Convolve, Inc. ("Convolve") and Massachusetts Institute of Technology ("MIT") appeal the decision of the United States District Court for the Southern District of New York granting summary judgment in favor of Compaq Computer Corp. ("Compaq"), Seagate Technology, LLC, and Seagate Technology, Inc. (collectively "Seagate"). The district court found that Compaq and Seagate did not misappropriate eleven (11) of the fifteen (15) Convolve trade secrets that remained at issue in the suit. The court also held that Compaq and Seagate did not infringe claims 1, 3, 4, and 7-15 of U.S. Patent No. 6,314,473 ("the '473 patent") and that claims 1-4, 7, 11,21, and 24¹ of U.S. Patent No. 4,916,635 ("the '635 patent") are invalid. After the district court's summary judgment order, all remaining claims were dismissed without prejudice. Convolve's appeal is timely and we have jurisdiction under 28 U.S.C. § 1295(a)(1). For the reasons below, we affirm the district court's rulings on the trade secret claims and validity of the asserted claims of the '635 patent, but vacate the court's judgment of non-infringement with respect to the '473 patent. We remand for further proceedings on the '473 patent.

I. BACKGROUND

In July 2000, Convolve and MIT sued Compaq and Seagate for, among other things, trade secret misappropriation and patent infringement. Convolve was conceived and is owned by Dr. Neil Singer. While a graduate student at MIT, Dr. Singer set out to solve the general problem of moving equipment quickly while minimizing the resultant vibrations. The '635 and '473 patents grew out of that research. MIT owns the '635 patent while Convolve owns the '473 patent and all alleged trade secrets in this suit. Convolve contends that Seagate manufactured drives and tools that infringe the '473 and '635 patents and misappropriated Convolve's trade secrets. Convolve also asserts that Compaq incorporated the Seagate drives into its computers and provided tools, such as the "F10 BIOS," that together infringe certain claims of the '473 patent. Convolve further claims that Compaq misappropriated multiple trade secrets relating to the Quick and Quiet User Interface.

Convolve is MIT's exclusive licensee for use of a software motion control technology called Input Shaping. According to Convolve, Input Shaping technology is a method for commanding equipment to move as quickly as possible without excitation or vibration. Convolve explains that, from 1997 to 1998, it developed an application for its Input Shaping technology in hard disk drives. Convolve asserts that this technology is covered by the trade secrets and patents involved in this case.

The technology at issue relates to improving "seeks" in computer hard drives. The figure below depicts a generic hard drive:'473 patent, Figure 10A.

Hard drives store data in small magnetized spots on a magnetic coating on the surface of platters (77) inside the drive. Data is arranged in concentric "tracks" on each platter. Disk drives have multiple platters, each containing thousands of tracks. Data can be stored randomly on the surface of the platters such that a single file may be stored in non-contiguous blocks, sometimes far apart on the disk. To retrieve data, the drive uses an inductor to detect the magnetic polarization of each "bit." To store data, electromagnets change a bit's magnetic polarization. The inductor and electromagnet are located on a "head" (76) which itself is located on an "arm" (74).

The hard drive employs two motors to read and write data: (1) the spindle motor that spins the platters, allowing the head to cover the platters' area while traversing over a line or arc; and (2) the voice coil motor ("VCM"), that moves the arm across the spinning platters. The VCM is controlled by a microcontroller or processor using feedback from the arm's position. When the microcontroller receives instructions, it directs the VCM to move the head toward the target track. The process of moving from track-to-track is called "seeking," and the amount of time it takes for the head to arrive at the correct track is called "seek time." Because data is stored on disparate parts of the platter, the arm must be able to move both between tracks that are far apart, called "long seeks," and tracks that are close together, called "short seeks."

A component of seek time is "settle time," which is the time it takes for the arm to settle from any residual vibrations caused by the arm's movement. Quickly stopping the arm will cause it to vibrate, and the vibrations must stop before reading or writing. If the arm does not properly settle over the desired track, the data will not be retrieved or written accurately. Naturally, fast seeks are preferable because they allow for faster reading or writing of data and, in turn, faster computer performance.

Historically, fast seeks were "noisy." Quickly moving and stopping the head caused vibrations that created "seek acoustics," or a distinct clicking noise that can irritate users. As such, there is a direct correlation between fast seeks and increased seek acoustics. In other words, the faster the seek, the more noise, the slower the seek, the less noise. Convolve's technology attempted to minimize seek acoustics resulting from fast seeks.

A. PATENTS

The '635 patent is entitled "Shaping Command Inputs to Minimize Unwanted Dynamics" and was filed on September 12, 1988. The '635 patent discloses a "method[,called shaping,]. . . for generating an input to a system to minimize unwanted dynamics in the system response and to reduce energy consumed by the system during moves." '635 patent, col. 3, ll. 62-65. The '635 patent also discloses an apparatus for shaping commands to a system "to reduce endpoint vibration." Id. at col. 12, ll. 36-37. Claim 1 is representative:

A method for generating an input to a physical system to minimize unwanted dynamics in the physical system response comprising:

establishing expressions quantifying the unwanted dynamics of the physical system;

establishing first constraints bounding the available input to the physical system;

establishing second constraints on variation in system response with variations in the physical system characteristics; finding a solution which is used to generate the input which minimizes the value of the expressions while satisfying the first and second constraints; and

controlling the physical system based on the input to the physical system whereby unwanted dynamics are minimized.

'635 patent, col. 10, ll. 40-56.

The '473 patent is entitled "System For Removing Selected Unwanted Frequencies In Accordance With Altered Settings In A User Interface Of A Data Storage Device," and was filed on March 4, 1999. The '473 patent discloses a method for application of input shaping to computer disk drives and embodies a user interface that allows customization of disk drive speed and acoustics. A user can choose to make a drive run faster and noisier, orslower and quieter. Claim 10 of the patent is representative:

Method of controlling operation of a data storage device, comprising:

providing a user interface for controlling one of a seek time of the data storage device and an acoustic noise level of the data storage device;

operating the user interface so as to alter settings of one of the seek time and the acoustic noise level of the data storage device in inverse relation; and

outputting commands to the data storage device causing the data storage device to alter seek trajectory shape by shaping input signals to the data storage device to reduce selected unwanted frequencies from a plurality of frequencies in accordance with the altered settings.

'473 patent, col. 44, ll. 33-46.

B. CONVOLVE'S CLAIMS

In 1998, Convolve and Compaq began licensing negotiations regarding Convolve's technology. To facilitate the discussions, Convolve and Compaq signed a nondisclosure Agreement ("NDA") and agreed to share their respective confidential information for "furthering a business relationship." J.A. at 820. The confidential information to be disclosed was described as "storage peripheral market information and technology information" from Compaq and "algorithms and processes for enhancing positioning systems" from Convolve. Id. The NDA states that, to trigger either party's obligations, the disclosed information must be: (1) marked as confidential at the time of disclosure; or (2) unmarked, but treated asconfidential at the time of disclosure, and later designated confidential in a written memorandum summarizing and identifying the confidential information. The NDA explicitly excludes from its scope any...