Citations
- 391 F. Supp. 2d 321
Full opinion text
OPINION and ORDER OF COURT
AMBROSE, Chief Judge.
Pending before the Court is a Motion by Defendants N2K, Inc. (“N2K”), CDNow, Inc., and CDNowOnline, Inc. (collectively, “CDNow”), seeking summary judgment in this patent infringement case on the grounds that the patents-in-suit are invalid and that the method utilized by Plaintiff in calculating its damages is invalid as a matter of law. Also pending is a Motion by Plaintiff Sightsound.com, Incorporated (“Sightsound”), seeking summary judgment with regard to the affirmative defense and counterclaims of inequitable conduct offered by Defendants. For the reasons discussed below, Defendants’ Motion is denied and Plaintiffs Motion is granted.
I. INTRODUCTION
A. Factual Background
Plaintiff describes the “Eureka!” moment of inventor Arthur Hair as having occurred more than fifteen years ago when he was first shown a “digital audio compact disc.” (Plaintiffs Brief in Opposition to the Motion for Summary Judgment, “Plf.’s Brief in Opp.,” Docket No. 174, at 1.) Mr. Hair claims not to have been overly impressed by this device because he realized music was still being distributed on a physical medium even though it had been recorded in the same digital form that computers used to store and communicate information. Mr. Hair determined to eliminate the physical medium altogether and devise a method by which consumers could purchase and download music to their personal computers over telecommunications lines. (Id.)
Several years later, on March 2, 1993, the United States Patent and Trademark Office (“PTO”) issued United States Patent No. 5,191,573 (“the ’573 Patent”) to Mr. Hair who later assigned all his rights, title and interest in the ’573 Patent to a company he co-founded, known as Parsec Sight/Sound, Inc. (“Parsec.”) He also assigned to Parsec two other patents, No. 5,675,734, issued on October 7, 1997 (“the ’734 Patent”), and No. 5,966,440, issued on October 12, 1999 (“the ’440 Patent”). The ’734 and ’440 Patents are claimed to be continuations of ’573 Patent. (Amended Complaint, Docket No. 39, “Am. Compl.,” ¶¶ 14 and 17.) All three patents (“the Sightsound Patents”) relate to a method of selling digital audio and/or video signals from a host computer to a remotely located personal computer via telecommunications lines.
In 1995, Parsec became the first entity to sell a digital audio song for download over the internet, using the system developed by Mr. Hair, and in April 1999, sold its first digital movie via the Internet, again using Mr. Hair’s patented technology. (Plf.’s Brief in Opp. at 2.) On April 1, 1999, Parsec and a sister corporation, Digital Sight/Sound, Inc., were merged and the surviving corporation renamed Sight-sound.com, Incorporated.
Plaintiff claims that in 1996, Defendant N2K began offering free downloads of digital audio music files. (Plf.’s Brief in Opp. at 2.) When Sightsound learned of this activity, it advised N2K of its patents and offered to provide download services for Defendant’s customers. N2K rebuffed the offer and in July 1997 launched its own system, known as “www.MusicBoule-vard.com” for selling music in digital download form over the Internet.
On March 31, 1999, a merger occurred between N2K and Defendant CDNow, Inc. CDNow became the parent of a new corporation known as CDNowOnline and of N2K. Subsequently, all the assets of N2K, including those related to its digital audio download business, were transferred to either CDNow or CDNowOnline. CDNow shut down www.MusicBoulevard.com and initiated “www.CDNow.com,” even though CDNow was aware that Sightsound had sued N2K.
B. Procedural History
Sightsound filed suit against N2K in this Court on January 16, 1998, alleging that N2K had infringed its patent rights under the ’573 and ’734 Patents. While discovery was underway, the mergers discussed above took place and Plaintiff consequently filed an Amended Complaint on April 3, 2000, adding CDNow and CDNowOnline as additional defendants and changing the name of the plaintiff to Sightsound.
Plaintiffs Amended Complaint alleges that by making, selling, and/or offering to sell (or inducing others to make, sell or offer to sell) digital audio signals for use with processes and/or systems within the scope of the Sightsound Patents, Defendants have infringed on its valid and enforceable patents without authority. (Am. Compl., ¶¶ 21-28.) Plaintiff further claims that N2K and its successors had notice of these patents pursuant to U.S.C. § 287 prior to Plaintiff filing suit, but willfully and deliberately continued their infringing activities until at least May 1999 through their download service, www.MusicBoule-vard.com. (Id., ¶¶ 25-28.)
Similarly, in Count II of the Amended Complaint, Sightsound claims that beginning in February 2000, Defendants made, sold, and/or offered to sell (or induced others to make, sell or offer to sell) digital audio signals for use with processes and/or systems within the scope of the three patents via their service, www.CDNow.com. (Am.Compl., ¶¶ 30-36.) As in Count I, Plaintiff claims that these actions are infringements carried out with notice and without authority.
As relief, Plaintiff seeks an injunction declaring that the patents-in-suit are valid and enforceable, that Defendants’ actions have infringed the patents, and that further acts of infringement are prohibited. Further, because the infringements were wilful and deliberate, Plaintiff seeks not only compensatory damages but also treble damages pursuant to 35 U.S.C. § 284 and reasonable attorneys’ fees pursuant to 35 U.S.C. § 285. (Am Compl., Prayer for Relief, ¶¶ H and I.)
In their Answer and Counterclaim, filed on April 27, 2000, Defendants CDNow and CDNowOnline alleged that the patents are invalid under 35 U.S.C. §§ 102, 103 and/or 112. (Docket No. 40, ¶¶ 37-39.) They also filed a counterclaim against Sightsound pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, seeking a declaratory judgment that neither Defendant infringed on the patents or induced infringement thereof.
On May 18, 2000, N2K filed its First Amended Answer, Affirmative Defenses and Counterclaims (Docket No. 45), in which it also claimed that the three Patents were invalid. N2K also offered as an affirmative defense the claim that Sight-sound had failed to disclose to the PTO the fact that research into the prior art carried out during prosecution of the ’573 and ’734 Patents had identified “numerous materials relevant and material to the patentability of the claimed inventions.” N2K claimed that the ’573 and ’734 Patents were unenforceable as a result of Plaintiffs inequitable conduct in failing to disclose this information. (Id., ¶¶ 40-43.)
Discovery was stayed for some twenty months while the parties attempted to settle their dispute. In February 2001, they filed their pleadings directed to the claim construction phase of the litigation. As part of this phase, a Markman hearing was held on April 18-20, and May 16, 2001, before Magistrate Judge Kenneth Benson who had been assigned the case by Judge Donald Lee.
Meanwhile, on March 1, 2001, Defendants CDNow and CDNowOnline filed a Motion for Leave for File an Amended Answer and Counterclaim (Docket No. 77), arguing that during discovery, they had come to believe that Mr. Hair had provided false or misleading information to the PTO during prosecution of the ’440 Patent application. They sought leave to amend their Answer to include an affirmative defense of inequitable conduct and a counterclaim for a declaratory judgment of patent unenforceability based on that conduct. (Id. at 5; see also Declaration of Michael Barclay, Docket No. 78, Exhibit 1, Defendants CDNow and CDNowOnline’s Amended Answer and Amended Counterclaims, “CDNow’s Am. Ans.”) Defendant N2K similarly amended its answer and counterclaim, seeking to extend the inequitable conduct defense it had previously stated its earlier Amended Answer to cover Mr. Hair’s actions regarding prosecution of the ’440 Patent as well. (See Docket No. 80, Exhibit A, Second Amended Answer, Affirmative Defenses and Counterclaims of N2K, Inc., “N2K’s Sec. Am. Ans.”)
Judge Benson entered his Report and Recommendation on the claims construction phase on February 8, 2002. (“Magistrate’s Report,” Docket No. 105, and amendment thereto at Docket No. 113.) Upon Judge Benson’s resignation from the bench on August 16, 2002, and Judge Lee’s recusal on October 18, 2002, the case was reassigned to me. On November 11, 2002, following a status conference, I issued a Memorandum Order of Court, adopting Judge Benson’s Report and Recommendations as amended. (Docket No. 130.) At the same time, over objections by Plaintiff, I granted the Motions to Amend by CDNow and by N2K, setting out the inequitable conduct allegations. (Docket Nos. 131 and 132.)
On December 9, 2002, Plaintiff advised Defendants that the only claims remaining at issue are Claims 1, 2, 14, and 26 of the ’734 Patent (against all Defendants) and Claims 6, 8, 11, and 12 of the ’440 Patent (against CDNow and CDNowOn-line) (these claims will be referred to collectively as the “Asserted Claims.”) (Defendants’ Exhibits to the Declaration of Steven M. Hayes in Support of Defendants’ Motion for Summary Judgment, “Hayes Decl. Exhs.,” Docket No. 162, at Exh. 14.) According to Plaintiff, these Claims represent two embodiments of the Hair invention.
On April 24, 2003, Sightsound filed a Motion for Summary Judgment pursuant to Fed.R.Civ.P. 56, seeking to dismiss with prejudice all of the inequitable conduct affirmative defenses and counterclaims relating to inequitable conduct. (Docket No. 156, “Plf.’s Motion.”) On the same day, Defendants also filed for summary judgment, arguing that the Asserted Claims are invalid under 35 U.S.C. §§ 102, 103, and/or 112 and that the calculation used by Sightsound in establishing its damages is invalid as a matter of law. (Docket No. 159, “Defs.’ Motion.”)
C. Jurisdiction and Venue
Jurisdiction is appropriate in this court pursuant to 28 U.S.C. § 1338(a), giving district courts original jurisdiction over civil actions arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Venue is proper here under 28 U.S.C. § 1400(b) which permits a civil action for patent infringement to be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.
II. STANDARD FOR SUMMARY JUDGMENT
A court may grant summary judgment if the party so moving can show, based on “pleadings, depositions, answers to interrogatories, and admissions on file together with the affidavits, if any, ... 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); Rossetti v. Busch Entertainment Corp., 87 F.Supp.2d 415 (E.D.Pa.2000). If a reasonable jury could return a verdict for the non-movant, the dispute is genuine and if, under substantive law, the dispute would affect the outcome of the suit, it is material. A factual dispute between the parties that is both genuine and material will defeat a motion for summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
In considering a motion for summary judgment, the court must view all the evidence in the light most favorable to the non-movant, accept the non-movant’s version of the facts as true, and resolve any conflicts in its favor. Rossetti, id., citing Matsushita Elec. Indus. Co. Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) and Big Apple BMW, Inc. v. BMW of North America, Inc., 974 F.2d 1358, 1363 (3d Cir.1992). In short, the defendants must show that if the pleadings, depositions and other evidentia-ry material submitted to date were admissible at trial, the plaintiff could not carry its burden of proof based on that evidence and a reasonable jury would thus decide all genuine material disputes in the defendants’ favor. Celotex Corp. v. Catrett, 477 U.S. 317, 318, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
Once the moving party has demonstrated that there are no genuine issues of material fact, the burden shifts to the non-moving party to “make a showing sufficient to establish the existence of every element essential to his case, based on the affidavits or by depositions and admissions on file.” Celotex, id. at 322-23, 106 S.Ct. 2548; Rosetti, id.; Fed.R.Civ.P. 56(e). The sum of the affirmative evidence to be presented by the non-moving party must be such that a reasonable jury could find in its favor, and it cannot simply reiterate unsupported assertions, conclusory allegations or mere suspicious beliefs. Liberty Lobby, id. at 250-252, 106 S.Ct. 2505; Groman v. Township of Manalapan, 47 F.3d 628, 633 (3d Cir.1995).
In the area of patent law, summary judgment may be granted only if the moving party can overcome by clear and convincing evidence the legal presumption that a duly-issued United States patent is valid. Eli Lilly & Co. v. Barr Labs., 251 F.3d 955, 962 (Fed.Cir.2001), citing 35 U.S.C. § 282. Validity of a patent is a question of law which a court may decide at the summary judgment stage. Eli Lilly, id. A district court properly may grant summary judgment on questions of invalidity due to lack of enablement, obviousness, or anticipation “only when the underlying factual inquiries present no lingering genuine issues.” Beckson Marine, Inc. v. NFM, Inc., 292 F.3d 718, 723 (Fed.Cir.2002).
As to the standard of review at summary judgment for the counterclaims and affirmative defense of inequitable conduct, such claims require the defendant to provide “evidence of affirmative misrepresentations of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive.” Purdue Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1366 (Fed.Cir.2001) (internal quotation omitted). Both intent and materiality are questions of fact that must be proven by clear and convincing evidence. Id. Thus, inasmuch as Defendants here will have the burden of proof at trial, they must now come forward with proof that would permit a reasonable trier of fact to find in their favor under a clear and convincing evidence standard. See Liberty Lobby, 477 U.S. at 254, 106 S.Ct. 2505, holding that when a heightened proof standard, e.g., clear and convincing evidence, will apply at trial, that standard also applies at summary judgment stage.
III. DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
Defendants move for summary judgment on the grounds that the ’734 Patent and the ’440 Patent are invalid as a matter of law. (Defs.’ Motion at 1.) Specifically, Defendants argue that the copy protection claims lack the enablement required by 35 U.S.C. § 112; alternatively, to the extent those claims are enabled, they and the other Asserted Claims are anticipated by prior art under 35 U.S.C. § 102 and/or are rendered obvious by prior art under 35 U.S.C. § 103. (Id.)
As a threshold matter, I note that both parties rely heavily on the testimony of experts to support their positions. Where there is “specific, plausible and detailed testimony by dueling expert witnesses,” summary judgment is often inappropriate. See e.g., Total Containment, Inc. v. Environ Prods., 99-1059, 99-1060, 1999 WL 717946, *4, 1999 U.S.App. LEXIS 22072, *11 (Fed.Cir. Sept. 15, 1999), vacating and remanding district court’s grant of summary judgment on the question of anticipation; St. Clair Intellectual Prop. Consultants v. Sony Corp., CA 01-557-JJF, 2003 U.S. Dist. LEXIS 3543, *1-*2 (D.Del. Feb. 21, 2003), concluding that there were genuine issues of material fact regarding enablement, anticipation and obviousness where the issue of validity was reduced to conflicting expert testimony; and Real v. Bunn-O-Matic Corp., 119 F.Supp.2d 807, 811 (N.D.Ill.2000), denying summary judgment where conflicting expert opinion on the question of enablement presented an issue for the trier of fact. I have read the declarations, reports and deposition testimony of the experts and find that their opinions are plausible and certainly detailed. In considering the questions raised by Defendants, therefore, I have kept in mind the effect such conflicting expert testimony has against granting summary judgment.
A. Are the Copy Protection Claims Invalid for Lack of Enablement?
Claims 1 and 2 of the ’734 Patent and Claims 6 and 8 of the ’440 Patent relate to copy protection features believed to be commercially desirable for preventing unauthorized copying of downloaded files. (Plf.’s Brief in Opp. at 3.) Defendants argue that these “Copy Protection Claims” are invalid because they fail to comply with the disclosure requirements of 35 U.S.C. § 112. (Defendants’ Brief in Support of Motion for Summary Judgment, Docket No. 160, “Defs.’ Brief,” at 14.) Each of the Sightsound Patents provides for “electronically coding the desired digital video or digital audio signals ... into a configuration which would prevent unauthorized reproduction of the desired digital video or digital audio signals.” Defendants argue that Plaintiffs patents are invalid because there is “absolutely no disclosure” regarding the copy protection feature of the Hair invention. (Id.)
1. Relevant Law:
The Patent Act creates a presumption of validity for an issued patent which can only be overcome by clear and convincing evidence that the claimed invention fails to meet the requirements of patenta-bility. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed.Cir.2003), citing 35 U.S.C. § 282. Section 112 establishes a quid pro quo by which the patentee provides the public with full disclosure of the invention in exchange for the right to exclude others from making, using or selling the invention as claimed. The first paragraph of Section 112 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.
Where the patentee has failed to disclose information sufficient to enable those skilled in the art to make and use the claimed invention, the patent may be declared invalid for lack of enablement. Moba, 325 F.3d at 1321. Whether the patent specification satisfies the requirements for enablement is a question of law based on an underlying factual determination. Id.; see also Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed.Cir.1997) (“patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.... Tossing out the mere germ of an idea does not constitute enabling disclosure.”)
In determining enablement, the court will consider what is disclosed in the patent specification together with “what would be known to one of ordinary skill in the art without undue experimentation.” Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196 (Fed.Cir.1999); Genentech, 108 F.3d at 1365. “That some experimentation is necessary does not preclude enablement; the amount of experimentation, however, must not be unduly extensive.” Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed.Cir.1984). On the other hand, a patent need not teach what is well known in the art. Ajinomoto Co. v. Archer-Daniels-Midland Co., 228 F.3d 1338, 1345 (Fed.Cir.2000), cert. denied, 532 U.S. 1019, 121 S.Ct. 1957, 149 L.Ed.2d 753 (2001). Enablement is determined as of the date the patent application was first filed. Ajinomoto, id. at 1345. The parties here do not dispute that the ’734 and ’440 Patents are continuations of the ’573 Patent and thus date back to its filing date, June 13,1988.
2. The Basis for Defendants’ Claims Regarding Enablement
The sections entitled “Background of the Invention” of the ’734 and ’440 Patents set out four objectives. The first three are to provide new and improved systems or methodologies to (1) electronically sell and distribute, (2) store and retrieve, and (3) manipulate (i.e., sort, cue, and select) digital audio music or digital video. (Hayes Decl. Exh. 2, the ’734 Patent, describing a “System for Transmitting Desired Digital Video or Audio Signals,” and Exh. 3, the ’440 Patent, describing a “System and Method for Transmitting Desired Digital Video or Audio Signals.”) In their argument that the patents are invalid for lack of enablement, Defendants focus on the fourth objective of each Patent, that is, “to offer a new and improved methodology/system which can prevent unauthorized electronic copying of quality Digital Audio Music.” They argue that the specifications do not contain disclosures sufficient to enable the copy protection aspect of the Asserted Claims, that is, there is nothing in the disclosure that would teach one of ordinary skill in the art to devise a “new and improved” means to “prevent” unauthorized copying of the digital audio or video signals. (Defs.’ Brief at 17-18.)
In non-technical terms, Claim 1 of the ’734 Patent provides a method for transferring digital video or digital audio signals from a first party, “the seller,” to a second party, “the consumer.” The seller and consumer control separate computer memories and are in separate locations connected by telecommunications lines. The seller’s memory has a hard disk on which digital video or digital audio signals are stored, and a RAM chip where replicas of the coded signals from the hard disk are temporarily stored prior to transfer to the consumer. The signals are electronically coded “into a configuration ivhich would prevent unauthorized reproduction of the desired digital video or digital audio signals. ” The consumer telephones the seller and purchases the desired signals by providing a credit card number. The stored replica is transferred over the telecommunications lines from the seller’s RAM chip to the consumer’s memory, where the replica is then stored. (Hayes Deck Exh. 2, col. 8, line 39, through col. 9, line 8, emphasis added.)
Claim 2 of the ’734 Patent is dependent on Claim 1 and begins by reiterating the method set out in Claim 1. It then explains that the consumer has an integrated circuit, to which is attached a control panel, i.e., a “control integrated circuit” which controls and executes the consumer’s commands. The consumer uses the control panel to issue a command that initiates purchase of the desired signal from the seller’s hard disk. (Id., col. 9, lines 9-16.)
Claim 6 of the ’440 Patent is dependent on Claims 1 through 5. Like Claim 1 of the ’734 Patent, it discloses a step of “electronically coding the desired digital video or digital audio signals into a configuration which would prevent unauthorized reproduction of the desired digital video or digital audio signals.” (Hayes Deck Exh. 3, col. 9, lines 17-21.)
Claim 8 of the ’440 Patent is similar to Claim 2 of the ’734 Patent and describes the consumer’s use of a control panel to initiate the purchase of the desired signal. Because this claim is dependent on Claims 1 through 7, it includes coding of the desired signals into a configuration that would prevent unauthorized reproduction as set out in Claim 6. (Id., col. 9, lines 33-41.)
3. Analysis:
Defendants argue that there is nothing in the Patents to show that Mr. Hair intended the word “prevent” from having its ordinary dictionary meaning, that is, “to keep from happening, avert.” (Defs.’ Brief at 19.) Defendants contend that the Patents disclose no methodology or system which explains how the invention would keep unauthorized copying from happening. Nor would one possessing ordinary skill in the art know in 1988 how to incorporate some method or system to do so because then, as now, there was no effective means to prevent unauthorized copying. (Id. at 18-20.)
Plaintiff does not argue that either Patent specifically discloses a method for preventing the unauthorized copying. Sight-sound’s position is that Defendants’ claims of non-enablement rest on “a nonsensical interpretation” of the word “prevent” and that the proper definition is “to impede or present an obstacle to.” (Plf.’s Brief in Opp. at 26.) The definition chosen by Defendants is nonsensical because its use would require the Patents to claim “an absolute form of copy protection, a practical impossibility.” (Id. at 27.) Moreover, one skilled in the art in 1988 would have known such absolute protection was unachievable and would have employed a method that would have been reasonable, given the state of the art at that time. (Id. at 26-27.)
In construing a term, the court begins by considering the relevant intrinsic evidence, i.e., the claim language, the specification and the prosecution history. Markman, 52 F.3d at 979. The analytical focus must begin and remain centered on the language of the claims themselves, “for it is that language that the patentee chose to use to ‘particularly point[ ] out and distinctly claim[] the subject matter which the patentee regards as his invention.’ ” Interactive Gift Express, Inc. v. CompuServe, Inc., 256 F.3d 1323, 1331 (Fed.Cir.2001), quoting 35 U.S.C. § 112, para. 2. “Generally speaking, we indulge a heavy presumption that a claim term carries its ordinary and customary meaning.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002). This presumption is rebutted where the patentee, acting as his own lexicographer, has provided a definition different from the term’s ordinary and customary meaning or if he has provided or disavowed an interpretation of the term during the prosecution history. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 and n. 3 (Fed.Cir.1998). Neither party points to any interpretation of the word “prevent” which was provided or disavowed in the prosecution history and thus could be used to shape the scope of the claim, nor is there any evidence that Mr. Hair defined the term “prevent” in the patent claims or specifications.
The phrase in question is “a configuration which would prevent unauthorized reproduction of the ... signals.” The dictionary on which both parties rely defines “prevent” as “(1) to keep from happening: AVERT; (2) to keep (someone) from doing something: IMPEDE; (3) to anticipate or counter in advance or to present an obstacle.” Webster’s II New Riverside University Dictionary (1988) at 933. Defendants criticize Plaintiff for passing over the first definition of “prevent” in favor of the second and third entries. (Defendants’ Reply Brief in Support of Their Motion for Summary Judgment, “Defs.’ Reply Brief,” Docket No. 184, at 1.) I find no support for this criticism in the case law and, in fact, courts have clearly done exactly that when doing so allows the claims to be reasonably construed.
Another dictionary which would have been available in the late 1980s, the Compact Edition of the Oxford English Dictionary (1984) (“OED”), provides as the first contemporary definition, “to stop, keep, or hinder (a person or other agent) from doing something;” the next definition is “to provide beforehand against the occurrence (of something); to render (an act or event) impracticable or impossible by anticipating action; to preclude, stop, hinder.” OED at 1337-38, definitions 7 and 8. This latter definition is described as “a chief current sense.” The Random House Unabridged Dictionary of the English Language (1987) at 1535 defines “prevent” as “to keep from occurring; avert; hinder; (2) to hinder or stop from doing something.” Thus, it is apparent when comparing all three dictionaries that the word “prevent” incorporates both the concept of absolutely stopping or keeping an event from happening (Defendants’ choice of definition) as well as merely hindering the event by taking anticipatory action which would make it difficult for the event to occur (Plaintiffs definition).
Where a claim term is expressed in general descriptive words, the court will not add a “narrowing modifier before an otherwise general term that stands unmodified in a claim.” Renishaw, 158 F.3d at 1249. Despite Defendants’ protestations in their Reply Brief (at 1) that they have never taken the position the patents are not enabled because they do not teach “an absolute and unbreakable form of copy protection,” that position is undercut by comparing the two definitions the parties propose. If “prevent” is understood to encompass anything less than an act which would result making unauthorized copying totally impossible, that act would fall within the scope of Plaintiffs definition of interposing some hindrance to make it extremely difficult to copy the digital signals. Because any means which would allow copying even one time would essentially do away with Defendants’ argument on this point, I must conclude that the definition of “prevent” which they would have me adopt is just such an absolute standard.
Where review of the patent language itself fails to resolve an ambiguity as to a disputed term, a court may turn to extrinsic evidence such as expert testimony, prior art, technical treatises and inventor testimony. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed.Cir.1996); Markman, 52 F.3d at 980. Such evidence may be used to help the Court understand the claims, but may not be used to vary or contradict the claim language. Vitronics, id. Where there is a dispute about the ordinary and customary meaning of the word, the court turns to “the best indicator of claim meaning ... its usage as understood by one of skill in the art at the time of invention.” Moba, 325 F.3d at 1316, citing Markman, 52 F.3d at 986.
Although they never explicitly agree upon the qualifications of one skilled in the art, the parties do agree that in 1988, such a person would have known methods of encryption designed to protect digital signals from unauthorized copying. (Plf.’s Brief in Opp. at 30; Defs.’ Brief at 20.) According to the Oxford English Dictionary, the verb “to encrypt” means “to convert (data, a message, etc.) into cipher or code, esp. in order to prevent unauthorized access; to conceal in something by this means.” See “OED Online” at http://dictionary.oed.com. (emphasis added). Similarly, the American Heritage Dictionary of the English Language (1992), at 607 defines “encrypt” as “to scramble access codes (to computerized information) so as to prevent unauthorized access.” (Emphasis added.) If one of ordinary skill in 1988 thought that the purpose of encryption was to prevent unauthorized access, but knew there was no effective means to achieve that goal absolutely, then logically, he or she would have interpreted the phrase “a configuration which would prevent unauthorized reproduction of the ... signals” as meaning a configuration which would incorporate the most effective method of protecting the digital signals from copying, given the capabilities of encryption or other means known at that time. Moreover, there is evidence that those skilled in the art use the word “prevent” in a non-absolute sense, at least today. Plaintiffs expert, Justin Douglas Ty-gar, Ph.D., points out that the website controlled by CDNow used the phrase “encryption prevents the file from being copied or played without permission.” (Plaintiffs Exhibits to Brief in Opposition to Motion for Summary Judgment, “Plf.’s Exhs.,” Docket No. 175, Exh. A, Rebuttal Expert Report, “Tygar Rebuttal,” at 34-39 and Appendix D thereto, eighth page). James A. Moorer, Ph.D., one of Defendants’ experts, also repeatedly used the word “prevent” in describing copy protection methods which he acknowledged did not absolutely stop copying. (Plf.’s Exh. E, Deposition of James A. Moorer, March 3, 2003, “Moorer Depo.” at 89-94.) Dr. Moorer conceded that a system he had previously described as a means to prevent copying provided only “a limited deterrent or a limited discouragement to unauthorized copying.” (Id. at 97.)
4. Conclusion:
In sum, if “to prevent” is given its broader, non-absolute meaning of “to hinder” or “to impede,” the Copy Protection Claims are enabled because, as Defendants admit, one of ordinary skill in the art in 1988 would have known methods of converting the digital signals into a code which would make it difficult for someone to copy the downloaded signals without authorization but would also have realized that such methods were fax from perfect. Defendants’ argument that encryption methods were easily decrypted is only another way of saying that the methods to prevent copying were not absolutely foolproof; it does not mean that the use of encryption did not hinder the unauthorized copying. And it is common knowledge, even among the “computer challenged,” that developers of decryption methods are only a short step behind the encrypters. I therefore conclude that Plaintiffs definition of “prevent” set out at page 29 of its Brief in Opposition, i.e., “presenting a technical obstacle sufficient to impede the ordinary customer from duplicating the purchased digital audio signal” is appropriate to the facts of this case. Since Defendants’ argument for lack of enablement rests only on its overly restrictive definition of “prevent,” their Motion for Summary Judgment in this regard must be denied.
B. Are the ’734 and ’440 Patents Invalid As Anticipated by Prior Art?
Claims 14 and 26 of the ’734 Patent and Claims 11 and 12 of the ’440 Patent describe “a single unit” that performs all the functions of purchasing, downloading and playing digital audio music. (Plf.’s Brief in Opp. at 3.) Defendants argue that these “Single Unit Claims” are anticipated by prior art and are therefore invalid under 35 U.S.C. § 102, specifically by a Japanese patent published in December 1987 and thus prior to the earliest date on which Sightsound Patents claim priority. (Defs.’ Brief at 23-29.) Those same Claims are also anticipated by a subscription service in public use in the United States more than one year prior to Mr. Hair’s June 13, 1988 filing. (Id. at 29-34.)
1. Relevant Law:
Section 102, in relevant part, provides that a person shall be entitled to a patent unless:
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.
35 U.S.C. § 102(a) and (b).
Succinctly stated, a party arguing that a patent is invalid because it was anticipated is arguing that the invention is not, in fact, new. Anticipation “requires that the same invention, including each element and limitation of the claims, was known or used by others before it was invented by the patentee.” Hoover Group, Inc. v. Custom Metalcraft, Inc., 66 F.3d 299, 302 (Fed.Cir.1995).
“The first step in any invalidity analysis is claim construction.... The second step, determining whether a prior art reference discloses each and every limitation of the claim expressly or inherently is a factual question reviewed for substantial evidence. This factual question is contingent upon the proper claim construction. A claim limitation is inherent in the prior art if it is necessarily present in the prior art, not merely probably or possibly present. The dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from the prior art reference’s teaching that every claim [limitation] was disclosed in that single reference.” Akamai Techs, v. Cable & Wireless Internet Servs., 344 F.3d 1186, 1192 (Fed.Cir.2003) (Internal citations and quotations omitted).
Courts interpreting and applying Section 102 have concluded that in order to find a patent invalid for anticipation, the party opposing the patent must come forward with clear and convincing evidence that “the four corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Systems, Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.Cir.2000).
“Whether a prior art reference anticipates a patent claim is a question of fact.” Finnigan Corp. v. ITC, 180 F.3d 1354, 1362 (Fed.Cir.1999). However, summary judgment on anticipation may be appropriate “if the record reveals no genuine dispute of material fact” such that “no reasonable jury could find that the patent is not anticipated.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1327 (Fed.Cir.2001).
2. Anticipation by Akashi:
Defendants argue that the Single Unit Claims are anticipated first by a patent issued on December 10, 1987, to a Japanese inventor, Hisanobu Akashi, under the title “Automated Sales System for Music on Record Albums” (“Akashi” or “the Aka-shi Patent”). (Defs.’ Brief at 23.) According to Defendants, Akashi teaches a system involving a first party host computer which stores digital music owned by a record company and a second party computer, referred to as a “recording reproducing apparatus,” located in the second party’s home, i.e., remote from the host computer. The second party connects his computer to the host computer via telecommunications lines and uses his computer monitor to search the first party’s database of digital music on the host computer. He then selects and purchases the desired music through an “automated sales system,” the music is transferred over telecommunications lines and downloaded to his computer, which is capable of recording and playing digitized music. (Defs.’ Brief at 7; see also Exh. A thereto providing a detailed comparison of Akashi with the ’440 and ’734 Patents.) Because Aka-shi was published approximately six months before the application for the ’573 Patent was filed in June 1988, Akashi qualifies as prior art to the Sightsound Patents.
Claim 14 of the ’734 Patent is dependent on Claims 11 through 13. Collectively, Claims 11 through 14 disclose separate seller and consumer memories and control units, including control panels and integrated circuits, which are remote from each other; a transmitter controlled by the seller and a receiver controlled by the consumer; seller’s sales RAM; the consumer’s incoming and playback RAM in electrical communication with the seller’s integrated control circuit; and the consumer’s video display and speakers. The two memories are connected by telecommunications lines, including telephone lines. Money is transferred from the consumer to the seller electronically. The desired digital audio or video signals are transferred from the seller’s memory to the consumer’s memory, which includes a hard disk, and stored there. (Hayes Decl. Exh. 2 at col. 10, line 51 through col. 11, line 47.)
Claim 26 of the ’734 Patent summarizes much of the preceding Claims and discloses the consumer’s control panel and speakers connected to the consumer’s receiver for playing the desired digital audio signal. The receiver and speakers are controlled by a control panel, which the consumer also uses to choose the desired signal from the seller’s hard disk. (Id. at col. 14, line 32 through col. 15, line 20.)
Defendants describe Claim 11 of the ’440 Patent as “essentially the same as Claim 6” except that it discloses using the consumer’s control panel to purchase the desired digital video or audio signals from the seller, as well as to command and control the playing of the desired signals. (Defs.’ Brief at 5.)
Claim 12 of the ’440 Patent states that the seller and consumer each have separate control units in separate locations, with separate memories connected by telecommunications lines used to conduct electronic sale of the desired digital signals by the seller to the consumer. The signals are transferred from the seller’s memory to the consumer’s memory after the sale. The consumer has a means for playing the desired signals, which is controlled by the control panel of his or her control unit. (Hayes Deck Exh. 3 at col. 10, lines 28-54.)
Defendants discuss in great detail the numerous ways in which they believe Aka-shi anticipates Claims 14 and 26 of the ’734 Patent. (Defs.’ Brief at 24-28.) However, they repeatedly rely on the assumption that computers capable of performing the functions Akashi described would “necessarily” include certain elements, a point with which Plaintiff takes issue. Defendants concede that these disclosures are only “inherent” in the Akashi patent.
Plaintiff argues that Akashi fails to disclose: (1) hardware associated with the electronic payment and/or sale of digital audio signals; (2) a single unit configured with speakers for playing the downloaded digital signals; or (3) a hard disk used by the purchaser to store the digital signals. Thus, Akashi cannot and does not anticipate explicitly the Single Unit Claims and thus the inherency argument fails as a matter of law. (Plf.’s Brief in Opp. at 7.)
a. Electronic sales:
Although the issue of anticipation is a question of fact, before anticipation may be addressed, a court must first properly construe the claims before it, a question of law. Akamai Techs., 344 F.3d at 1195, n. 4. Here, Judge Benson wrote, for example, in the construction of the phrase “means [or a mechanism] for electronically selling the desired digital video or digital audio signals” as used in Claims 4 through 8 and 10 of the ’734 Patent and Claims 12 through 15 of the ’440 Patent, that
the specification discloses that the first party control integrated circuit will be “designed to control and execute the ... commands of the [first party] and regulate the electronic transfer,” and that it will be the “means or mechanism” for charging the account of the buyer. It follows, then, that the “means” for electronically selling, which includes the transfer of the product in return for electronic payment, is a properly programmed control integrated circuit.
(Magistrate’s Report at 70.)
Similarly, he found that the ’734 Patent Claim 26 (referring to “a means or mechanism for the first party to charge a fee to the second party”) and Claim 14 (referring to a “means or mechanism for transferring money electronically via a telecommunications line”) each required a structure in the form of “an appropriately programmed control integrated circuit” to accomplish the purpose of the specification. (Magistrate’s Report at, respectively, 71 and 72.)
Plaintiff first argues that Akashi does not anticipate Claims 14 and 26 because it does not disclose the means to purchase digital audio signals using a specified structure in the seller’s or buyer’s unit. According to the express language of the Claims, as construed by the Court, each of the four Single Unit Claims requires an electronic sale to occur through a specific structure. (Plf.’s Brief in Opp. at 7.) Sightsound argues that Defendants concede that Akashi does not disclose these elements and that the record fails to support Defendants’ argument that the missing disclosures are “inherent” in the Aka-shi reference. (Id)
Defendants contend that the Akashi Patent incorporates a system for the “automated sale” of music on record albums using a telephone line. (Defs.’ Brief at 27.) This anticipates a “means or a mechanism for transferring money electronically via telecommunications lines” as found in Claim 14 of the ’734 Patent and the means or mechanism for the first party to charge the second a fee as found in Claim 26. (Id) According to Defendants, “automated sales” in Akashi is the same as “electronic sales” in the Sightsound Patents. They argue this is evidenced by Mr. Hair’s admission that in 1988, one skilled in the art would have known that electronic sales inherently involved a transfer of money by providing a credit card number over telecommunications lines. (Id, citing Hayes Decl. Exh. 31, Declaration of Arthur Hair before the PTO, May 5, 1992.) Defendants conclude that Akashi “inherently” anticipates the hardware and software used for electronic payment because it has an identical function, or at the very least a structure equivalent to, the electronic sales means and function claims of Claim 14 and the mechanism described in Claim 26. (Defs.’ Brief at 28.)
Under the doctrine of inheren-cy, a prior art reference will be deemed to anticipate a subsequent claim even if an element which is not expressly disclosed “is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Cont’l Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.Cir.1991). If the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates. See In re King, 801 F.2d 1324, 1326 (Fed.Cir.1986). “Inheren-cy, however, 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 suffi-dent.” In re Robertson, 169 F.3d 743, 745 (Fed.Cir.1999), quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). That is, in-herency requires that the missing descriptive material is “necessarily present,” not merely probably or possibly present, in the prior art. Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed.Cir.2002). Whether a claim limitation is inherent in a prior art reference is a question of fact. In re Schreiber, 128 F.3d 1473, 1477 (Fed.Cir.1997.)
As Plaintiff points out, Defendants’ own experts conceded that there were means to effect the sale of digital music according to the Akashi Patent which, unlike the ’734 and ’440 Patents did not require electronic sales over telecommunications lines. (Plf.’s Brief in Opp. at 9.) Dr. Michael Shamos, for instance, admitted that “electronic sales” could include “selling over the telephone by voice.” (Plf.’s Exh. G, Deposition of Michael Sha-mos, “Shamos Depo.,” at 82). Dr. Moorer admitted that a telephone call between human beings (a purchaser and a person employed by the record company who owned the host computer) could communicate the credit card information necessary to initiate the download of the music. (Moorer Depo. at 176-77).
More importantly, a detailed review of the Akashi Patent reveals no means or method whatsoever of effecting payment. (See Hayes Decl. Exh. 15, verified translation of Akashi Patent.) Although the Aka-shi Patent refers several times to “an automated sales system,” or “automated sales of music,” neither the section describing the means for solving the problem nor the embodiment includes a step describing how payment is either demanded or made. The word “automatic,” I conclude, could modify the means by which the music company distributes its recordings, i.e., via download from a host computer to the ultimate consumer, as compared to the conventional means of manufacturing compact disks or long play record albums to be sold via retail stores. (Akashi Patent at 2, ¶¶ 2-3.) Because Akashi never describes any method as to how payment is made, the ability to effect a sale by the transfer of credit card information directly from computer to computer is, at best, a possibility, which, as noted above, does not satisfy the requirements for demonstrating inherency. Thus, the Akashi Patent does not anticipate either directly or inherently the limitation in Claim 14 which requires “an appropriately configured integrated circuit within the buyer’s control unit” as the means for transferring money electronically from the buyer to the seller and the limitation in Claim 26 which requires “an appropriately programmed integrated circuit in seller’s control unit” to charge a fee for the download of the signal.
Defendants also argue that Akashi anticipates Claims 11 and 12 of the ’440 Patent, specifically the buyer’s use of a control panel to enter commands to purchase the desired signals and to command playback of the downloaded signals. (Defs.’ Brief at 28-29.) They argue one of ordinary skill in the art would recognize the “control unit 11” described in Akashi as being a keyboard and mouse combination used to generate the access signal, search the host computer database, select the signal to be downloaded, and “implicitly” command playback. Thus, to the extent Claims 11 and 12 are enabled, they are anticipated by Akashi and therefore invalid. (Id. at 29.)
I find that Akashi differs in at least two ways from Claims 11 and 12. First, as construed by Judge Benson, the control panel described in Claims 11 and 12 of the ’440 Patent is also used to electronically purchase the signals in addition to the tasks described by Defendants in the preceding paragraph. (Magistrate’s Report at 70-72.) Since there is no description in the Akashi Patent about how the electronic sale is to be effected, Akashi’s control unit 11 cannot be said to anticipate using the control panel for that step. Secondly, since Akashi presents only the possibility of using the recording reproducing apparatus for playback of the signals (as discussed in more detail immediately below), the use of control unit 11 to command that playback is also only a possibility. I find therefore, that at most, Akashi describes only the possibility of using its control unit 11 in a way which anticipates the use of the ’440 Patent control panel, not the necessity as required by law.
b. A single unit with speakers for playing the digital audio signals:
Dr. Tygar states that Claim 14 of the ’734 Patent discloses that the consumer will store the digital audio signals in his computer’s RAM before they are played and requires speakers connected to the control integrated circuit of his unit. (Ty-gar Rebuttal at 16-17.) Claim 26 of the ’734 Patent also requires speakers connected to the buyer’s computer memory. (Id. at 21.) Similarly, in the ’440 Patent, Claim 11 requires the specific step of entering commands through an input device to play downloaded signals and Claim 12 requires a control integrated circuit connected to stereo speakers. (Id. 26, 28.) I agree with Plaintiff that Dr. Tygar’s description of the requirement for speakers as part of the Hair invention conforms to the Magistrate’s construction of these claims. (See Magistrate’s Report, e.g, at 72-74.)
Defendants argue that Akashi inherently discloses speakers attached to a “recording reproducing apparatus,” through which the digital audio signals are played. (Defs.’ Brief at 25.) According to Defendants, Akashi describes the use of a compact disk deck as an example of what the apparatus could include and, in 1988, compact disk decks “would necessarily” include speakers. (Id.) Plaintiff argues that notwithstanding Defendants’ arguments to the contrary, Akashi does not discuss or even suggest that it incorporates a playback RAM, an input device for the digital audio signals, speakers, or a connection between the speakers and the consumer’s control integrated circuit. In fact, Sight-sound contends, Akashi is “completely silent” about how to play back the digital audio signals. Moreover, a reference in the Akashi Patent to using a compact disk deck as an example of its incorporated recording reproducing apparatus does not constitute an inherent disclosure because, as Defendants’ expert conceded, such disk decks in 1988 might not necessarily include speakers. (Plf.’s Brief in Opp. at 12 citing Shamos Depo. at 87.)
Contrary to Defendants’ arguments, a review of the Akashi Patent results in the conclusion that it does not inherently disclose speakers connected to the recording reproducing apparatus. I agree with Plaintiff that Akashi does not describe how the downloaded music is to be played, only how it is to be recorded. (Plf.’s Brief in 0pp. at 12.) That is, once the host computer receives a signal requesting a specific composition, “the data representing the music ... is then downloaded to the RAM in the recording apparatus and digitally recorded.... The recording reproducing apparatus may either be a digital audio tape recorder or a compact disk deck that employs a write-once, read-many recordable optical disk that allows data to be read immediately after the data is written.” (Akashi Patent at 2.) The next paragraph in the embodiment section describes the components of the apparatus and the peripheral equipment to which the apparatus is connected. Speakers are not mentioned. Nor is any method for playback discussed in the step-by-step description of the operational procedure; in fact, the procedure ends with the step of writing the downloaded data to a recordable optical disk. (Id. at 3.) Similarly, the description of the schematic diagrams of “one embodiment of a recording reproducing apparatus” does not refer to any means to play back the downloaded music.
In their Reply Brief, Defendants argue that Akashi specifically discloses RAM in the recording reproducing apparatus which is to be used for playback and playback can only be achieved by means of speakers which are needed to make sound audible to the human ear. (Defs.’ Reply Brief at 3.) The two references to RAM in the Akashi Patent relate only to the recording phase of the operation, not playback. (Akashi Patent at 2, ¶ 5; 3 at ¶ 6e.) Even if I were to accept Defendants’ argument that the RAM could be used to perform playback as well as the disclosed recording, the only conclusion to be drawn is that Akashi possibly discloses a means by which the downloaded signals can be played back through inherently disclosed speakers, not the necessity of integral speakers as disclosed in the Sightsound Patents.
c. An integral hard disk to store the downloaded signals:
Finally, Defendants argue that the recording reproducing apparatus described in the Akashi Patent would have taken the form of a personal computer including a hard disk on which the buyer would store downloaded digital signals. (Defs.’ Brief at 25.) Plaintiff contends that not only does Akashi describe the storage medium as a digital tape recorder or a compact disk deck that uses optical disks (see Aka-shi Patent at 2, ¶ 6), there is no requirement in the Akashi invention for hard disk storage in the buyer’s apparatus, much less any evidence that it would be used to store the downloaded signals. Sightsound argues that even if one concedes that a personal computer could have been used to store the data, not all personal computers in 1988 contained a hard disk.. Therefore, at best, disclosure of a hard disk to store the downloaded signals cannot be inherent in the Akashi Patent because existence of such a disk is merely possible, not required. (Plf.’s Brief in Opp. at 13.)
Defendants attempt to, refute this argument by pointing out that contrary to Plaintiffs interpretation of Claim 14 of the ’734 Patent, that Claim requires only that the signal be stored in the buyer’s “memory,” a term which may or may not include a hard disk. Nor does Claim 11 require that the downloaded signals be stored on a hard disk as opposed to another form of memory. Moreover, according to Defendants’ experts, any computer in 1988 capable of downloading digital audio signals would have included a hard disk. (Defs.’ Reply Brief at 3-4.)
Accepting Defendants’ argument for sake of analysis, I conclude that at best, it offers only one claim of the Sightsound Patents which was disclosed in the Akashi Patent. The standard for showing invalidity due to anticipation is much higher, i.e., would one skilled in the art reasonably understand or infer that every claim was disclosed in that single reference? Akamai Techs., at 1192. Having concluded that at least two other claims of the Sight-sound Patents were not disclosed by Aka-shi, I conclude that Akashi did not anticipate the Hair invention in its totality.
3. Anticipation by PAN:
The Performing Artists’ Network (“PAN”) is described by Defendants as a “music-oriented online subscription service” which offered its members the opportunity to communicate with each other via a mainframe computer. (Defs.’ Brief at 8.) A member established an electronic account using her personal computer with a modem to connect to the mainframe and providing her credit card information. She could then connect to the mainframe at any time, search the directory listings of PAN databases, and select a file to be transmitted over telecommunications lines back to her computer where it was stored. The fees and connect time charges associated with a member’s use of the PAN system were automatically billed to her credit card account. (Id.)
Defendants claim that this subscription service, which was in public use as of 1984, i.e., more than one year before the June 1988 filing date for the Sightsound Patents, anticipates the Single Unit Claims. (Defs.’ Brief at 29.) Specifically, Defendants argue that the PAN host mainframe corresponds to the seller’s mainframe described in Claims 14 and 26; that the PAN member’s personal computer corresponds to the buyer’s computer and memory; that using a dial-up network to connect the PAN member’s computer to the mainframe to search the database and download data via modem corresponds to using telecommunications lines for the same purposes as described in the Sightsound Patents; and that establishing an account by providing credit card information over telecommunications lines and charging for the services anticipates the “electronic sales” component of the Sightsound Patents. In addition, the PAN member’s use of her personal computer to access the mainframe, search the database and select the data to be downloaded satisfies the use of the control panel described in Claim 11 to purchase the desired signals. Claim 12 is similarly satisfied by the PAN member using her personal computer to command and control the playback function. Defendants conclude, therefore, that all claim elements and limitations of the Single Unit Claims are anticipated by PAN. Thus, the Patents should be invalid pursuant to 35 U.S.C. § 102(b). (Defs.’ Brief at 30-34; see also Exh. B thereto, comparing Sight-sound Patent Claims to the PAN system.)
First, I note that nearly all of the evidence relating to PAN is based on the uncorroborated testimony of PAN’s founder, Perry Leopold. (See Hayes Deck Exh. 17, Deposition of Perry Leopold dated February 27, 2001, “Leopold Depo.”) “The case law is unequivocal that an inventor’s testimony respecting facts surrounding a claim of derivation or priority of invention cannot, standing alone, rise to the level of clear and convincing proof.” Finnigan Corp., 180 F.3d at 1367 (internal quotation omitted). This rule applies as well when a witness testifies concerning public use of the invention one year before the patentee filed his patent, as Mr. Leopold does here, even if that witness is presumed to be an uninterested in the outcome of the litigation but is testifying on behalf of an interested party. Finnigan Corp., id. at 1367-68 (“A witness who testifies to antedating the invention of the patent-in-suit can be expected to derive a sense of professional or personnel accomplishment in being the first in the field, and in this sense is not uninterested in the outcome of the litigation, even if that witness is not claiming entitlement to a patent”); see also Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed.Cir.1998), setting out criteria for evaluating credibility of such witnesses.
Plaintiff contends that Defendants ignore the Court’s claim construction by arguing that PAN anticipates the Sig