Magsil Corp.. v. Seagate Tech.

• Decision Date: 16 February 2011
• Docket Number: Civil Action No. 08–940.
• Parties: MAGSIL CORP., et al.v.SEAGATE TECHNOLOGY, et al.
• Court: U.S. District Court — District of Delaware

764 F.Supp.2d 674

MAGSIL CORP., et al.

v.SEAGATE TECHNOLOGY, et al.

Civil Action No. 08–940.

United States District Court, D. Delaware.

Feb. 16, 2011.

Jack B. Blumenfeld, Rodger Dallery Smith, II, Morris, Nichols, Arsht & Tunnell, Wilmington, DE, for Magsil Corp., et al.Craig Tolliver, Pro Hac Vice.David Sochia, Pro Hac Vice.Steven J. Pollinger, Pro Hac Vice.Elizabeth Rui He, Richards, Layton & Finger, PA, Wilmington, DE, for Seagate Technology, et al.Alfred W. Zaher, Pro Hac Vice.Douglas E. Lumish, Pro Hac Vice.Jeffrey G. Homrig, Pro Hac Vice.Deirdre M. Digrande, Pro Hac Vice.

MEMORANDUM

HARVEY BARTLE III, Chief Judge.

Plaintiffs MagSil Corporation and Massachusetts Institute of Technology (collectively “plaintiffs”) have sued Hitachi Global Storage Technologies Inc., Hitachi America Ltd., Hitachi Data Systems Corporation, and Shenzhen ExcelStor Technology, Ltd. (collectively “defendants”) for infringement of U.S. Patent No. 5,629,922 (the “'922 patent”), entitled “Electron Tunneling Device Using Ferromagnetic Thin Films.”

Before the court are the parties' cross motions for summary judgment. Plaintiffs' motion asserts that defendants' hard drive products and components infringe the '922 patent and that one reference on which defendants rely is not prior art to the '922 patent. In their motion, defendants argue that plaintiffs cannot prove infringement, and alternatively, that the asserted claims of the '922 patent are invalid as obvious, insufficiently enabled, and lacking a sufficient written description.

I.

Summary judgment is appropriate when “the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c); see Liebel–Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1377 (Fed.Cir.2007). In viewing the record, all justifiable inferences are to be drawn in favor of the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 245, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); CFMT, Inc. v. Yieldup Int'l Corp., 349 F.3d 1333, 1337 (Fed.Cir.2003). In determining whether summary judgment is appropriate, we “view the evidence presented through the prism of the substantive evidentiary burden that would inhere at trial.” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238 (Fed.Cir.2003) (quoting Anderson, 477 U.S. at 245, 106 S.Ct. 2505) (internal quotation omitted).

II.

Plaintiff Massachusetts Institute of Technology is the assignee of the '922 patent, and plaintiff MagSil Corporation has an exclusive license to develop commercially the technology described in that patent. Defendants produce and sell hard disc drives and components of hard disc drives that plaintiffs contend infringe claims 1–5, 23–26 and 28 (the “asserted claims”) of the ' 922 patent.

The application leading to the '922 patent was filed on March 21, 1995, and the U.S. Patent and Trademark Office (“PTO”) issued the '922 patent to inventors Jagadeesh Moodera, Terrilyn Wong, Lisa Kinder, and Robert Meservey on May 13, 1997. The '922 patent states claims relating to a multi-layered device, called a junction that consists of at least two thin electrodes separated by a thin layer of insulation. Independent claim 1 of the '922 patent teaches:

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.

'922 patent at 8:43–54. Dependent claims 2 through 5 each add additional limitations to claim 1, none of which is relevant for present purposes. Independent claim 23 teaches:

A memory device for storing binary data comprising:

a movable read-write sensor head comprising two trilayer devices, each having a junction with a resistance, separated by a gap, wherein each device comprises:

a first film layer having a first magnetization direction,

a second film layer having a second magnetization direction, and

an electrical insulator layer between the first and the second film layers, 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 10:25–37. Dependent claims 24 through 26 and claim 28 each add limitations to claim 23 that, similar to claims 2 through 5, do not bear on the motions before the court.

According to the patent specification, researchers had known “for many years” the basic theory of “tunnel resistance arising from conduction electron spin polarization.” Id. at 2:3–5. In short, this resistance is a “quantum phenomenon” that arises when electric current is passed through electrodes separated by a “thin insulating layer.” Id. at 1:17–23. Each of the electrodes has a magnetization direction, and the electrical resistance the junction exhibits depends on the relative alignments of the electrodes' magnetization directions. The junction's electrical resistance is minimized when the electrodes' magnetization directions are parallel and is maximized when the magnetization directions are antiparallel,¹ that is, offset by 180 degrees. Id. at 1:26–31. Applying magnetic fields to the junction rotates one or more of the electrodes' magnetization directions, and by controlling these rotations, the junction's electrical resistance can be increased or decreased. Id. at 2:15–33.

The specification reveals that the work giving rise to the '922 patent has “consistently” yielded a change in resistance of 10% “in several tens of junctions” and that the inventors had observed resistance changes of “as much as 11.8%” at room temperature. Id. at 2:44–51, 5:32–38. The specification further explains that “[t]his increase in [resistance] is believed to depend, inter alia, on a decrease in surface roughness, which apparently directly couples the two electrodes ferromagnetically.” Id. at 2:51–54. It states that the insulating layer between the junction's electrodes is an improvement over prior art and is “important in keeping the surface integrity of the [ferromagnetic] electrodes.” Id. at 2:56–58. The specification also describes in some detail the method by which the inventors constructed their preferred embodiments and the means by which the junctions described in the patent may be incorporated into a data storage device. Id. at 3:52–4:38, 6:66–8:36.

III.

We first turn to defendants' argument that the invention claimed has not been enabled in the patent specification. It is the “quid pro quo” of the patent system that the inventor must disclose how “to practice the full scope of the claimed invention” in exchange for an exclusive right to practice the invention for a limited term. AK Steel Corp., 344 F.3d at 1244. This requirement arises from 35 U.S.C. § 112, which provides:

The specification shall contain a written description of the invention, and of 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, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Inventors may claim their inventions in generic terms as long as the specification describes the invention with the specificity required by § 112. Amgen, Inc. v. Chugai Pharm. Co., Inc., 927 F.2d 1200, 1213 (Fed.Cir.1991). As the Court of Appeals for the Federal Circuit has observed, “A patentee who chooses broad claim language must make sure the broad claims are fully enabled. 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) (internal quotations omitted). In order to satisfy the enablement requirement ² of § 112, “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.1991) (internal quotations omitted). Whether the specification enables the full scope of its claims without undue experimentation is measured as of the filing date of the patent application. Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339 (Fed.Cir.2003).

Because patents are presumed valid, an accused infringer must come forward with clear and convincing evidence that the specification does not enable the full scope of the asserted claims without undue experimentation. 35 U.S.C. § 282; Liebel–Flarsheim, 481 F.3d at 1377 (Fed.Cir.2007). Whether a patent enables the full scope of its claims is a question of law that turns on the underlying facts. Sitrick, 516 F.3d at 999. In considering these underlying facts, we draw all justifiable inferences in the patent holder's favor. Anderson, 477 U.S. at 245, 106 S.Ct. 2505.

To evaluate whether the patent enables a person of ordinary skill in the art to practice the invention without undue experimentation, courts consider a non-exclusive list of items, often referred to as the Wands factors: “(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.” In re Wands, 858 F.2d 731, 737 (Fed....