Reiffin v. Microsoft Corp., No. C 98-266.

CourtUnited States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Northern District of California
Writing for the CourtWalker
Citation270 F.Supp.2d 1132
PartiesMartin Gardner REIFFIN, Plaintiff, v. MICROSOFT CORPORATION, Defendant.
Decision Date31 March 2003
Docket NumberNo. C 98-266.
270 F.Supp.2d 1132
Martin Gardner REIFFIN, Plaintiff,
No. C 98-266.
United States District Court, N.D. California.
March 31, 2003.

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John D. Vandenberg, Klarquist Sparkman Campbell Leigh & Whinston LLP, Portland, OR.

Eric L. Wesenberg, Orrick Herrington & Sutcliffe LLP, Menlo Park.

Norman H. Beamer, Fish & Neave, Palo Alto.


WALKER, District Judge.

On January 23, 1998, plaintiff commenced this action for patent infringement of two United States patents to which he holds the rights: US Patent Nos 5,694,603 ('603 patent) and 5,694,604 ('604 patent). See Doc # 1. On January 24, 2002, the court held a claim construction hearing. See Doc # 354. The court issued its claim construction order on April 30, 2002, which prompted the parties to file or renew the motions now pending. See Doc # 365.

Those motions include: (1) defendant's motion for partial summary judgment of invalidity and lack of priority under 35 USC §§ 112, 1 and 120 (Doc # 373); (2) defendant's motion for summary judgment of patent invalidity and unenforceability due to prosecution laches (Doc # 370); (3) plaintiffs motion to permit additional discovery pursuant to FRCP 56(f) (Doc #406); (4) plaintiffs motion to enlarge time for hearing on defendant's prosecution laches and FRCP 56(f) motions (Doc #416); (5) defendant's motion to the declaration of Richard Zaitlen (Doc # 420); (6) plaintiffs motion for leave to file a second amended complaint (Doc # 436); (7) defendant's motion for leave to file a surreply in opposition to plaintiffs motion for leave to file a second amended complaint (Doc #446); and (8) plaintiffs motion for leave to file a surreply in support of the same (Doc # 449). This order addresses each of these motions in turn.

For the reasons detailed below, defendant's motion for partial summary judgment of invalidity and lack of priority (Doc # 373) is GRANTED. Defendant's motion to strike the Zaitlen declaration (Doc # 420) is GRANTED IN PART and DNIED IN PART. Plaintiffs FRCP 56(f) motion (Doc # 406) is DENIED. Defendant's motion for summary judgment of patent invalidity and unenforceability due to prosecution laches (Doc # 370) is DNIED. Plaintiffs motion to enlarge time (Doc # 416) is TERMINATED as an administrative matter. The parties' motions to file surreplies to plaintiffs motion for leave to file a second amended complaint (Docs ##446, 449) are GRANTED. Plaintiffs motion for leave to file a second amended complaint (Doc # 436) is GRANTED IN PART and DENIED IN PART.


Defendant has moved for summary judgment of patent invalidity, pursuant to 35 USC § 112, ¶ 1, and lack of priority, pursuant to 35 USC § 120. Doc #373. Specifically, defendant argues that plaintiffs 1990 patent application, which resulted in the issuance of the '603 patent, does not disclose "multithreading" as claimed by plaintiff and as defined by the court in its claim construction order. See Doc # 365. Because the '603 patent is invalid for failure to comply with the written description requirement of 35 USC § 112,

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¶ 1, defendant contends further that the '604 patent is not entitled to an effective filing date of 1990 (or earlier) under 35 USC § 120.

After discussing the written description requirement of § 112, ¶ 1, the court turns to the parties' competing interpretations of the invention described in the 1990 application and claimed in the '603 patent.


Summary judgment is available in patent cases as in other areas of litigation. Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 646 (Fed.Cir.1994). In reviewing a summary judgment motion, pursuant to FRCP 56, the court must determine whether genuine issues of material fact exist, resolving any doubt in favor of the party opposing the motion. Anderson v. Liberty Lobby, 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ("[S]ummary judgment will not lie if the dispute about a material fact is `genuine.'"). The burden is on the moving party to demonstrate the absence of any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Ultimately, the court must determine whether a reasonable jury could return a verdict in favor of the nonmoving party. Anderson, All U.S. at 248-50,106 S.Ct. 2505.

The nonmoving party may not simply rely on the pleadings, however, to claim that a genuine issue of material fact exists. The nonmoving party must support that claim with significant probative evidence. TW Elec. Serv. v. Pacific Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir.1987). The evidence presented by the nonmoving party "is to be believed, and all justifiable inferences are to be drawn in his favor." Anderson, 477 U.S. at 255, 106 S.Ct. 2505.

In the absence of a genuine issue of material fact, summary judgment is appropriate. Summary judgment will also lie "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial * * * since a complete failure of proof concerning an essential element of the nonmoving party's case necessarily renders all other facts immaterial." Celotex, All U.S. at 322-23, 106 S.Ct. 2548.

A party seeking a determination of patent invalidity faces a heightened burden of proof. "Because a patent is presumed to be valid, see 35 U.S.C. § 282 (1994), the party asserting invalidity has the burden of showing invalidity by clear and convincing evidence." WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339, 1355 (Fed.Cir.1999) (citing Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 881 (Fed.Cir.1988)). "[I]n ruling on a motion for summary judgment, the judge must view the evidence through the prism of the substantive evidentiary burden." Anderson, All U.S. at 254, 106 S.Ct. 2505. "The `clear and convincing' standard of proof is an intermediate standard which lies somewhere between 'beyond a reasonable doubt' and a 'preponderance of evidence.'" Buildex v. Kason Industries, Inc., 849 F.2d 1461, 1463 (Fed.Cir.1988) (internal citations omitted). One articulation of the standard endorsed by the Federal Circuit defines clear and convincing evidence "as evidence which produces in the mind of the trier of fact `an abiding conviction that the truth of its factual contentions are highly probable.' " Id. (quoting Colorado v. New Mexico, 467 U.S. 310, 316, 104 S.Ct. 2433, 81 L.Ed.2d 247 (1984) (internal citation omitted)).

Paragraph 1 of section 112 of Title 35 of the United States Code provides that "[t]he specification [in a patent application] shall contain a written description of the

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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 * * * to make and use the same * * *" Id

"The purpose of the `written description' requirement is broader than to merely explain how to `make and use'; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention." Vas-Cath v. Mahurkar, 935 F.2d 1555, 1563-64 (emphasis in original). "Whether the claims of the [patent or patents at issue] are adequately supported by the written descriptions of the inventions set forth in the specification of those patents * * * is all that is required for compliance with the written description requirement of § 112, ¶ 1." Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir.2000).

"Although the applicant does not have to describe exactly the subject matter claimed, the description must clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." Vas-Cath, 935 F.2d at 1563 (quoting In re Gosteli, 872 F.2d 1008, 1012 (Fed.Cir.1989); internal quotation marks and ellipsis omitted). An applicant may meet this requirement by providing a verbal description or a drawing that provides the relevant information. "The specification as originally filed must convey clearly to those skilled in the art the information that the applicant has invented the specific subject matter later claimed. When the original specification accomplishes that, regardless of how it accomplishes it, the essential goal of the description requirement is realized." In re Wright, 866 F.2d 422, 424 (Fed Cir.1989) (internal citation omitted).

In addition to express disclosure, an application may inherently disclose aspects or elements of an invention. "In order for a disclosure to be inherent, however, the missing descriptive matter must necessarily be present in the patent application's specification such that one skilled in the art would recognize such a disclosure." Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed.Cir.1998). "Inherency * * * may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient." In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (internal citations omitted).

In reversing the court's previous order granting defendant's motion for summary judgment of patent invalidity under § 112, 111, the Federal Circuit expressly framed the specific task confronting the court: "Thus, * * * the 1990 application considered as a whole must convey to one of ordinary skill in the art, either explicitly or inherently, that [plaintiff] invented the subject matter claimed in the '603 patent." Reiffin, 214 F.3d at 1346 (internal citations omitted).


The 1990 application,...

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