Harris Corp. v. Ericsson Inc.
| Decision Date | 26 March 2002 |
| Docket Number | No. CIV.A.3-98 CV 2903-M.,CIV.A.3-98 CV 2903-M. |
| Citation | 194 F.Supp.2d 533 |
| Parties | HARRIS CORPORATION and, Harris Canada, Inc., Plaintiffs, v. ERICSSON INC., Telefonaktiebolaget LM Ericsson and Ericsson Radio Systems AB, Defendants. |
| Court | U.S. District Court — Northern District of Texas |
Gale R. Peterson, Cox & Smith, San Antonio, TX, pro se.
Frederick G. Michaud, Jr., Attorney at Law, Allan M. Soobert, Attorney at Law, Steven M. duBois, Attorney at Law, Alan L. Whitehurst, Attorney at Law, Ronni S. Jillions, Attorney at Law, Burns, Doane, Swecker & Mathis, Alexandria, VA, Eric William Buether, Attorney at Law, Mike McKool, Jr., Attorney at Law, Monte M. Bond, Attorney at Law, Richter Darryl Burke, Attorney at Law, Christopher M. Joe, Attorney at Law, Kenneth P. Kula, Attorney at Law, Steven J. Pollinger, Attorney at Law, Eric S. Tautfest, Attorney at Law, McKool Smith, Dallas, TX, for plaintiffs.
Brett Christopher Govett, Attorney at Law, Jeffrey W. Kemp, Attorney at Law, Michelle M. Douglas, Attorney at Law, Fulbright & Jaworski, Lee M. Simpson, Attorney at Law, Jackson Walker, Dallas, TX, Robert S. Harrell, Attorney at Law, Heather Fleniken Cochran, Attorney at Law, Fulbright & Jaworski, Houston, TX, Richard McMillan, Jr., Lawrence J. Gotts, Crowell & Moring, Washington, DC, Henry C. Bunsow, Attorney at Law, Stuart L. Gasner, Attorney at Law, Keker & Van Nest, San Francisco, CA, for defendants.
Before the Court are Ericsson's Motion to Strike Harris's Newly Presented Evidence on the CECOM On-Sale Bar and to Enter Summary Judgment of Invalidity on the Harris Patent No. 4,599,732 ('732), filed November 2, 2001, and Harris's Motion for Summary Judgment of no inequitable conduct and no anticipation by the Mills article or Walsh patent, filed as part of Harris's Motion for Partial Summary Judgment Regarding the '732 Patent on May 15, 2001.
Plaintiff Ericsson Inc. ("Ericsson Inc.") and Third-Party Defendants Telefonaktiebolaget LM Ericsson ("LME") and Ericsson Radio Systems AB ("ERS") (collectively "Ericsson") filed their Motion for Partial Summary Judgment of Invalidity and Non-Infringement regarding Harris Canada, Inc.'s Patent '732, on May 15, 2001. Ericsson sought summary judgment of invalidity (on asserted claims 1, 3, 39, and 49) of the '732 patent, and summary judgment of either non-infringement or invalidity on claim 7, the only other asserted claim. Specifically, Ericsson asserted that all claims against them related to the '732 patent were invalid under 35 U.S.C. §§ 102 and 103; that LME and ERS had not infringed any of the asserted claims of the '732 patent; and that Ericsson had not infringed claim 7 of the '732 patent.
On May 15, 2001, Harris Corporation ("Harris") likewise filed its Motion for Partial Summary Judgment Regarding the '732 Patent, in which it sought summary judgment on certain literal infringement claims (claims 1, 3, 7, 39, and 49), and summary judgment that the '732 was not invalid, anticipated by prior art, obvious, or invalid because of inequitable conduct before the patent office. It also sought summary judgment on Ericsson's printed publication defense.
On October 1 and 2, 2001, the Court heard oral argument on these Motions.1 As to the '732 Motions, the Court granted Ericsson's Motion for Summary Judgment on the inapplicability of the experimental use exception, and the non-infringement of claim 7. The Court granted Harris's Motion on Ericsson's printed publication defense, and reserved judgment on Harris's Motion that the Walsh patent and Mills article did not anticipate the '732 patent and that the alleged failure to disclose certain non-Harris prior art did not constitute inequitable conduct.2 The Court denied the Motions in all other respects, except as to Ericsson's Motion that the 1982 United States Army CECOM contract created an on-sale bar to the validity of the '732 patent on which the Court reserved its ruling. The Court preliminarily found that fact issues remained on whether an offer for sale incorporated the invention of the '732 patent and whether the invention was "ready for patenting." In reaching that preliminary conclusion, the Court relied, in part, on evidence introduced at the hearing that was not a part of the summary judgment filing. Harris introduced the January 1983 and October 1983 CECOM Quarterly Reports in an attempt to disprove any alleged intention to offer the '732 patent for sale in the CECOM contract. Ericsson now requests the Court to strike the evidence and find the '732 patent invalid under the on-sale bar.
The '732 patent, issued on July 8, 1986, has an effective filing date of April 17, 1984, and names Ronald S. LeFever ("LeFever") as the inventor. The patent is entitled "Technique for Acquiring Timing and Frequency Synchronization for Modem Utilizing Known (Non-data) Symbols as Part of Their Normal Transmitted Data Format" and upon issuance was assigned to Harris.
The '732 patent allows data messages (such as voice transmissions) transmitted from a transmitter to a receiver (such as from the base station to a cellular telephone receiver) to be reproduced by the receiver free from distortion. Previously an initialization sequence was required to allow the receiver an opportunity to identify where the data transmission originated. This initialization sequence consumed valuable bandwidth. The '732 teaches a method of detecting known symbols in a transmission through signal processing equipment. Instead of the separate initialization sequence, known sequences are interleaved with unknown sequences. The receiver can determine where the known sequence was interleaved and then it can synchronize itself with the transmitted message (obtaining location, timing, and frequency information about the transmission). Then, if the frequency and phase properties of the signal are distorted by the channel, the receiver can account for these changes through various synchronization functions.3
The '732 patent and the '338 patent are related. The '732 patent acknowledges that the prior art McRae '338 patent discloses interleaving blocks of known symbols with the data message being transmitted in order to update the settings (weighting coefficients) of the receiver equalizer to track the dynamic characteristics of the communications channel. The '732 patent uses known data already interleaved in the data for synchronization as well as equalization in order to eliminate the need for the initialization sequence. Thus, the '732 patent not only uses the interleaving and equalization as set forth in the '338 patent, but it also uses the known data to perform a synchronization process.
Certain facts are necessary to the determination of Ericsson's invalidity defense:
• LeFever, the inventor of the '732 patent, worked in the he Advanced Technology Department ("ATD") throughout the 1970's and 1980's, principally in the research and development of various government projects. The ATD was a research group concerned with advanced development of various technologies, including High Frequency ("HF") Radio Communications, to which the '732 applies.
• Harris alleged that it frequently defrayed the cost of research and development ("IR & D" work) by completing some of its IR & D work in government contracts pursuant to various federal regulations and agreements with the government, including providing to the U.S. Department of Defense certain annual and quarterly IR & D reports or data sheets. IR & D data sheets are not offers to sell anything. Only after a Request for Proposal ("RFP") has been issued by a government agency and a proposal submitted by a company will a government contract be awarded.
• In July, 1982, Harris submitted its annual report for fiscal year 1983. It described a new concept for synchronization that this Data Sheet indicated would be developed and implemented in fiscal year 1983. The Data Sheet stated that LeFever had been working on a HF Modem development project.
• In 1982, during the time frame of the development of the '732 patent, Harris and LeFever were awarded the Air Force RADC contract for the Message Mode Modem, a low rate spread spectrum modem,4 During this time, LeFever conceived of the idea that some principles applicable to synchronization in the Message Mode Modem might work to solve some problems being addressed by the HF Modem development team. He memorialized his ideas in his lab notebook on March 15, 1982.
• The U.S. Army CECOM issued a Statement of Work ("SOW") on December 29, 1981, detailing technology to be developed under the CECOM modem contract. The CECOM modem required the delivery of two working breadboard models of the modem using construction techniques that would permit the units to withstand normal bench handling and a moderate amount of movement in the laboratory environment. On July 7, 1982, Harris responded to the RFP, which was attached to the SOW, by submitting a Technical Proposal. It was awarded the contract on September 30, 1982.
• Harris worked on the development of the CECOM breadboard modem in 1983 and early 1984 and delivered it in the first quarter of 1984. Between May and June 1984, the modem incorporating certain '732 synchronization techniques was tested over the air, for the first time.
• LeFever presented some slides to the working group relating to a portion of the claimed invention in January 1983.
• On or about April 19, 1983, Harris made another proposal, in response to the RADC's RFP for an Advanced Development Model Modem, relating to the '732 technologies.
• LeFever submitted an Invention Disclosure Form in August of 1983, identifying the conception date as March 15, 1982. Harris filed its '732 patent application on April 17, 1984. The critical date for the '732 patent is April 17, 1983, one year prior to the filing of the '732 patent application ...
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