Avocent Huntsville Corp. v. Clearcube Technology, Inc. (443 F. Supp. 2d 1284, 2006)

MEMORANDUM OPINION

SMITH, District Judge.

Plaintiff, Avocent Huntsville Corporation (“Avocent”), owns two patents directed to the problems of transmitting computer-generated, analog color video signals over extended distances: ie., U.S. Patent No. 6,150,997 (“the ’997 patent”), and U.S. Patent No. 6,184,919 (“the ’919 patent”). Avocent contends that accused products of defendant, ClearCube Technology, Inc. (“ClearCube”), infringe claim 1 of the ’997 patent, and claims 1, 6, and 16-18 of the ’919 patent. See 35 U.S.C. § 271. ClearCube’s amended answer asserts affirmative defenses and counterclaims for invalidity under 35 U.S.C. §§ 102, 103, and 112, and for patent unenforceability under the doctrine of inequitable conduct before the Patent and Trademark Office. Numerous motions are pending, but not all are addressed in this opinion. A list of those motions raising issues discussed herein is set out below, followed immediately by an outline of the ensuing discussion.

A. Document Number (“doc.no.”) 136 — ClearCube’s motion for summary judgment declaring that certain Avocent patents and/or applications constitute prior art to the patents-in-suit;

B. doc. no. 142 — Avocent’s motion for a partial summary judgment declaring that the patents-in suit “are not invalid”;

C. doc. no. 154 — Avocent’s motion for separate trial of ClearCube’s inequitable conduct allegations;

D. doc. no. 157 — Avocent’s motion for a partial summary judgment declaring that it engaged in “no inequitable conduct”;

E. doc. no. 160 — Avocent’s motion for a partial summary judgment declaring that ClearCube’s products satisfy the “amplifier” limitation of claims 1 and 6 of the ’919 patent, and, claim 1 of the ’997 patent;

F. doc. no. 166 — ClearCube’s motion for partial summary judgment of non-infringement of claims 1 and 6 of the ’919 patent;

G. doc. no. 168 — Clear Cube’s motion for partial summary judgment of non-infringement;

H. doc. no. 171 — ClearCube’s motion for a partial summary judgment declaring that Avocent’s ’919 and ’997 patents are not enforceable; and,

I. doc. no. 174 — Avocent’s motion to strike the supplemental expert report of Gregg L. Vaughn, Ph.D.

OUTLINE OF DISCUSSION

Part One Standards of Review.................................................1293

Part Two Background of the Patents-inr-Suit....................................1294

A. The ’689 Application and %0I Patent.....................................1296

B. The Application...................................................1296

C. The Patents-in-Suit...................................................1296

1. The ’076 application and ’919 patent..................................1296

2. The ’697 application and ’997 patent..................................1297

Part Three The Disputed Claims ..............................................1297

Part Four Claim Construction Decisions........................................1300

Part Five Avocent’s Motion to Strike the Supplemental Report of ClearCube’s Expert Witness, Dr. Gregg L. Vaughn...........................................1300

A. Procedural Background................................................1300

B. Section II of Vaughn’s Supplemental Report — the “amplifier” non-infringement opinion................................................1303

1. Avocent’s argument................................................1304

2. Conclusion........................................................1304

C. Section III of Vaughn’s Supplemental Report — the “adapter” non-infringement opinion................................................1305

1. Conclusion........................................................1307

D. Sections TV and V of Vaughn’s Supplemental Report — “obviousness” and the validity of the patents-in-suit......................................1307

1. Scope of Dr. Vaughn’s rebuttal.......................................1308

a. Conclusion....................................................1308

2. New “prior art”....................................................1308

Part Six Infringement Contentions.............................................1309

A. Avocent’s Motion for Partial Summary Judgment Declaring that Clear-Cube’s Accused Products Include the “Amplifier” Element Recited in Claim 1 of the ’997 Patent, and, Claims 1 and 16 of the ’919 Patent----1310

1. Infringement analysis..............................................1311

a. “a circuit (ora device when connected in a circuit)”................1313

b. “that draws power from a source other than the input signal”.... 1313

c. “and provides an output signal that reproduces the essential features of the input signal”...................................1313

i.Dr. Vaughn’s testimony.....................................1314

2. Conclusion........................................................1315

B. ClearCube’s Motion for Partial Summary Judgment Declaring Non— Infringement of Claim 1 of the ’997 Patent, and, Claims 1 and 6 of the ’919 Patent......................................................1316

1. Procedural background.............................................1317

2. ClearCube’s summary judgment contentions ..........................1319

3. Avocent’s response.................................................1321

4. Conclusion........................................................1322

C. “The Adapter Motion” — ie., ClearCube’s Motion for Partial Summary Judgment Declaring Non-Infringement of Claims 1 and 6 of the ’919 Patent .............................................................1322

1. Facts relevant to “the adapter motion”................................1323

2. ClearCube’s argument..............................................1324

a. ClearCube’s “testing” contention.................................1324

b. ClearCube’s credibility contentions...............................1325

c. Dr. Vaughn’s rebuttal ..........................................1325

3. Conclusion........................................................1326

D. Avocent’s Motion for Partial Summary Judgment Declaring that Claims 16-18 of the ’919 Patent are Infringed..................................1326

Part Seven Avocent’s Motion for a Partial Summary Judgment Declaring That The Patents-in-Suit “Are Not Invalid”.........................................1326

Part Eight ClearCube’s Failure to Provide Evidence of Invalidity Under 35 U.S.C. §§ 102 and 112 ........................................................1328

Part Nine The Issues of Whether the ’997 Patent is Prior Art to the Asserted Claims of the ’919 Patent, and, Whether the %0I Patent is Prior Art to Both the ’997 and ’919 Patents......................................................1328

A. The %0k Patent is Prior Art to the ’997 and ’919 Patents....................1328

B. Is the ’997 Patent Prior Art to the ’919 Patent?............................1329

1. The first and second requirements of§ 102(e)(2).......................1330

2. The fourth requirement of § 102(e)(2) ................................1330

3. The third requirement of § 102(e)(2) .................................1331

a. Common versus disparate inventors..............................1331

4. Conclusion: The ’997 patent is not prior art to the asserted claims of the ’919 patent, due to Robert Asprey’s common inventorship... .1334

Part Ten ClearCube’s Contention that the Patents-in-Suit Are Invalid for “Obviousness” ....................................................................1334

A. The Patent Requirement of “Non-Obviousness”...........................1335

1. Obviousness is a question of law.....................................1336

2. The presumption of validity applies to the issue of obviousness..........1336

B. The Prior Art References Relied Upon by ClearCube as Support for its Contention that the Patents-in-Suit are Invalid for Obviousness..........1337

1. Impact of conclusion that the ’997 patent is not prior art to the asserted claims of the ’919 patent...................................1337

2. Impact of rulings on Avocent’s motion to strike Dr. Vaughn’s supplemental report....................................................1338

C. The Problems Attendant to Combining Prior Art References ...............1339

1. The requirement of “some teaching, suggestion, or motivation" in the prior art for selecting and combining references .....................1339

a. The presumption of validity applies to the issue of combining prior art references...........................................1341

D. The Deficiencies of ClearCube’s Proofs...................................1341

E. Conclusion...........■................................................1342

Part Eleven Motions Pertaining to the Accusation of “Inequitable Conduct” in the Patent and Trademark Office...............................................1342

A. Facts Relevant to Accusation of Inequitable Conduct.......................1344

1. Charles Phillips and Mark Clodfelter.................................1346

2. The ’689 application that issued as the %0f patent......................1346

3. The filing date of the ’H2 application.................................1347

4. Rejection of claims in the %f2 application in view of the ’jOj patent.... 1348

5. Simultaneous prosecution of the %12 application and the patents-in-suit............................................................1348

a. Continuing dispute over the filing date of the ’112 application.......1348

b. Notice of rejection?.............................................1349

c. Abandonment of the %I2 application..............................1349

6. The ’076 application and pending claim 20 ............................1350

a. Charles Phillips’s fifth request for correction of the filing date of the %I2 application ..........................................1350

b. Clodfelter’s first (March j, 1999) amendment in response to the PTO’s Office Action Summary rejecting pending claim 20.... 1351

c. Clodfelter’s second (March 22/23, 1999) amendment in response to the PTO’s Office Action Summary rejecting pending claim 20 — the so-called “Supplemental Amendment”...................1351

d. The PTO’s “Notice of Allowability” of pending claim 20.............1352

e. Examiner Le’s markings on the Supplemental Amendment.........1353

f. Rejection of Charles Phillips’s request for a change to the filing date accorded the %I2 application..............................1353

g. Amendment under 37 C.F.R. § 1.312.............................1353

7. Issuance of the patents-in-suit.......................................1354

B. The Inequitable Conduct Doctrine.......................................1354

1. The materiality of withheld information, or false and misleading statements to an examiner........................................1354

2. Intent to deceive...................................................1356

3. Balancing the materiality of withheld information or false and misleading statements to an examiner against evidence of an intent to deceive .................................................1356

4. Knowledge: claims of inequitable conduct arising from failure to disclose prior art.................................................1357

C. That Aspect ofAvocent’s Motion Seeking a Declaration against Clear-Cube’s “inequitable conduct affirmative defenses and counterclaims”... .1357

1. ClearCube’s challenge to the ’919 patent based upon the “Extender” and “AutoBoot Commander” line of products........................1357

a. Materiality ...................................................1358

b. Knowledge....................................................1358

c. Intent........................................................1359

d. Conclusion....................................................1360

2. ClearCube’s challenge to the ’997 patent based upon the “Extender” line of products..................................................1360

a. Materiality ...................................................1360

b. Knowledge....................................................1360

c. Intent........................................................1360

d. Conclusion....................................................1361

3. ClearCube’s challenge to the ’919 patent based upon the filing date of the %I2 application and pending claim 20 of the ’076 application... .1361

a. Materiality ...................................................1361

b. Conclusion....................................................1362

D. ClearCube’s “Motion for Summary Judgment for Unenforceability of Avocent’s ’919 and ’997 Patents”.......................................1364

1. ClearCube’s challenge to the ’919 patent...............................1365

2.ClearCube’s challenge to the ’997 patent...............................1365

E. Motions Related to the Precise Filing Date of the %I2 Application...........1366

1. Avocent’s motion...................................................1367

a. Analysis......................................................1368

2. ClearCube’s motion ................................................1369

3. Avocent’s motion under MPEP § 609 ................................1370

4. Avocent’s motion under 37 C.F.R. § 1.312.............................1371

Part Twelve Avocent’s Motion for Separate Trial of ClearCube’s Inequitable Conduct Allegations ..........................................................1372

CONCLUSION................................................................1373

Part One

Standards of Review

The Federal Rules of Civil Procedure provide that summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, 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). The party moving for summary judgment bears the initial burden of showing the court, by reference to materials on file, that there are no genuine issues of material fact to be decided at trial. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

When the moving party has discharged its burden, the non-moving party cannot rest upon the pleadings. Instead, Rule 56(e) requires the party opposing summary judgment to go beyond the pleadings, and to demonstrate by affidavit or other appropriate means that there is a genuine issue of material fact for trial. See also Celotex, 477 U.S. at 324, 106 S.Ct. 2548. A “genuine” dispute about a material fact exists if the “evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Jeffery v. Sarasota White Sox, Inc., 64 F.3d 590, 594 (11th Cir.1995) (per curiam) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). Conversely, “summary judgment may be granted when no ‘reasonable jury could return a verdict for the nonmoving party.’ ” Pro-Mold & Tool Co., Inc. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1572 (Fed.Cir.1996) (quoting Anderson, 477 U.S. at 248, 106 S.Ct. 2505).

In determining whether there is a genuine issue of material fact, the evidence must be viewed in the light most favorable to the party opposing the motion for summary judgment, and all justifiable inferences are to be drawn in that party’s favor. See Anderson, 477 U.S. at 255, 106 S.Ct. 2505; see also, e.g., IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1380 (Fed.Cir.2005); Elekta Instrument v. O.U.R. Scientific International, Inc., 214 F.3d 1302, 1306 (Fed.Cir.2000); Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc., 145 F.3d 1303, 1307 (Fed. Cir.1998); Pro-Mold & Tool, 75 F.3d at 1572.

When a district court is, as here, presented cross motions for summary judgment on the same issues, “[t]he court must rule on each party’s motion on an individual and separate basis, determining, for each side, whether a judgment may be entered in accordance with the Rule 56 standard.” 10A Charles A. Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice and Procedure: Civil 3d § 2720, at 335-36 (1998) (footnote omitted).

“The fact that both the parties have moved for summary judgment does not mean that the court must grant summary judgment to one party or the other. Cross-motions are no more than a claim by each party that it alone is entitled to summary judgment, and the court must evaluate each motion on its own merits, taking care in each instance to view the evidence in favor of the nonmoving party.”

Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1302 (Fed.Cir.2005) (quoting Bubble Room, Inc. v. United States, 159 F.3d 553, 561 (Fed. Cir.1998)) (internal alteration omitted).

Part Two

Background of the Patents-in-Suit

Personal computers usually are located near video monitors. Consequently, computer-generated video signals normally are transmitted over cables that are no more than ten to twenty feet in length. Avo-cent was known as Cybex Computer Products Corporation prior to 2000, and Cybex was in the business of developing products that allowed customers to locate personal computers at extended distances from a user’s monitor, keyboard, and mouse. In a business setting, this resulted in less clutter at each user’s workstation, as well as increased security. As Avocent explained:

If the video, keyboard and mouse signals can be reliably transmitted over extended distances, the computers themselves can be located in a backroom where only an authorized computer administrator can physically access them. This prevents unauthorized software or files from being installed on the computers or copied from the computers.

There is a problem inherent in such configurations, however: computer-generated video signals degrade when transmitted over extended distances, resulting in undesirable debasement of clarity in the images depicted on the monitor’s screen.

Cybex’s early innovations directed to this problem were tailored to the transmission of digital, as opposed to analog, video signals. That was due to the fact that, during the 1980s, the leading computer signal-standard was the Color/Graphics Adapter (“CGA”) developed by IBM. CGA was a digital standard: that is, each “bit” of information was expressed as either a “1” or “0” value. IBM later introduced another signal standard, called the Enhanced Graphics Adapter (“EGA”). EGA also was a digital standard. Accordingly, Cybex’s original technology was designed to compensate for the degradation of digital signals transmitted by computers over extended distances: that is,

the digital information could be reliably recovered by comparing the received signal to an intermediate reference point. A “1” would be registered if the received signal was above the reference point; a “0” would be registered if the signal was below that reference point, regardless of line-induced degradation.

In the early 1990s, however, IBM introduced an analog video standard, called the Video Graphics Adapter (“VGA”), which presented a new set of challenges. Analog signals can have an infinite number of amplitudes between a minimum and maximum value, and the specific amplitude transmitted by the computer is the information conveyed by the signal. Thus, any degradation in the amplitude of an analog signal may cause an uncorrectable loss of information. As the computer industry began replacing digital video systems with the new, analog VGA systems, Cybex commenced its work on the problems associated with the transmission of analog VGA video over extended distances. Cybex’s innovations in this area ultimately led to the inventions disclosed in the patents-in-suit.

A. The ’689 Application and ’404 Patent

An early achievement for Cybex was the development of an amplifier device that could boost a weak analog video signal to a usable amplitude. Cybex filed U.S. Patent Application Serial No. 07/912,689 (“the ’689 application”) on July 13, 1992, and that application issued as U.S. Patent No. 5,276,404 (“the ’404 patent”) on January 4, 1994. Claim 1 of the ’404 patent recites a “non-inverting, constant current voltage amplifier,” and the remaining claims (2-6) are dependent upon claim 1.

B. The ’442 Application

Cybex mailed U.S. Patent Application Serial No. 08/177,442 (“the ’442 application”) to the Patent and Trademark Office (“PTO”) in early January 1994. The PTO assigned the application a filing date of January 5,1994 — an action that is disputed by Avocent. Even so, discussion of Avo-cent’s contention that the PTO should have assigned the ’442 application a filing date of January 4, 1994 (ie., the same day upon which the ’404 patent issued) will be addressed infra, in Part Eleven, Sections A(3), C(3), and E of this opinion, concerning ClearCube’s assertion that Avocent engaged in inequitable conduct before the Patent and Trademark Office.

The ’442 application described various systems for the transmission of computer-generated analog color video signals, and purported to be a “continuation-in-part” of the inventions disclosed in the ’689 application that issued as the ’404 patent. Robert R. Asprey was the sole inventor of the subject matter claimed in the application. The ’442 application never issued as a patent.

C.The Patents-irir-Suit

In 1996, during the pendency of the ’442 application that never matured into an issued patent, Cybex filed two additional patent applications, both of which ultimately issued as the patents-in-suit.

1. The ’076 application and ’919 patent

Cybex filed U.S. Patent Application Serial No. 08/660,076 (“the ’076 application”) on June 3, 1996, reciting various systems for the transmission of analog color video signals over extended distances. The ’076 application purported to be a “continuation-in-part” of the ’442 application, and it issued as the ’919 patent on February 6, 2001. Robert R. Asprey, Philip M. Kirshtein, and Thomas V. Lusk are the three inventors named on the ’919 patent.

2. The ’697 application and ’997 patent

Cybex also filed U.S. Patent Application Serial No. 08/741,697 (“the ’697 application”) on October 31, 1996, reciting systems for the transmission of analog color video signals. The ’697 application purported to be a continuation-in-part of the ’442 application, and it issued as the ’997 patent on November 21, 2000. Robert R. Asprey is the sole inventor named on the ’997 patent.

It should be noted that, even though the ’697 application was filed last, on October 31, 1996 — almost four months after the filing date of the ’076 application that matured into the ’919 patent — it issued first, as the ’997 patent, on November 21, 2000. Conversely, the ’076 application, which was filed first (on June 3, 1996), issued last, as the ’919 patent, on February 6, 2001.

Part Three

The Disputed Claims

Avocent contends that ClearCube’s accused products infringe claim 1 of the ’997 patent, and claims 1, 6, and 16-18 of the ’919 patent. Claim 1 of the ’997 patent, and claims 1, 16, and 18 of the ’919 patent, are independent claims. Claim 6 of the ’919 patent is dependent on claim 1, and claim 17 of the same patent is dependent on claim 16. Claim 1 of the ’997 Patent recites:

1. A system for transmission of analog color video signals between a source of said signals and a video monitor, being at spaced locations, comprising: a plurality of computers, each providing, as a set, said color video signals;

a switch receiving said sets of said color video signals, each with respect to a common reference, from said computers and providing a selected said set of said color video signals as an output;

a signal transmitter at a first location responsive to said output of a set of said color video signals, said transmitter, including an amplifier for each said color video signal of one of said sets for providing a color video signal output and wherein at least a high frequency portion of each said color video signal has been amplified as a direct function of frequency and providing both an inverting and non-inverting signal, available as an output;

a plurality of video transmission circuits, each said circuit having first and second ends, respectively, one circuit for each of said color video signals of one of said sets and each said circuit having an input responsive to an output of said transmitter at said first end, and each said circuit having a responsive signal output at said second end;

a signal receiver at a second location responsive to each of said transmitted signal outputs and color video signal at said second end, including an amplifier for each said color video signal for providing a discrete color video signal with respect to a common reference; and

signal means responsive to said receiver for providing each said color signal, each with respect to a common reference, to an analog color video monitor.

Claim 1 of the ’919 Patent recites:

1. An extended-in-length computer video communications link for transmitting computer video signals comprising:

a source of computer video signals including red, green, and blue video signals,

a video transmitter comprising a plurality of amplifiers, one of each said amplifiers for each of said red, green, and blue video signals, each said amplifier comprising:

a signal input for receiving a one of said red, green and blue video signals,

frequency sensitive compensating circuitry responsive to a said video signal so that said amplifier provides a first video signal that increases in amplitude with increasing frequency at a first output and a second video signal that is an inverse of said first video signal at a second output,

a twisted pair of conductors for each said amplifier, with first and second conductors of said twisted pair coupled at one end to respective said first and second outputs of said amplifier,

an adapter for each of said twisted pair of conductors, each said adapter coupled to an opposite end of a respective one of said twisted pair of conductors, each said adapter receiving said first video signal and said second video signal and providing a respective said video signal as a single ended output, and further configured to provide a ground reference potential for said transmitter at said adapter, whereby need for a reference ground conductor between said transmitter and said adapter is eliminated.

Claim 6 of the ’919 Patent, which is dependent to claim 1 above, recites “[a] video communications link as set forth in claim 1 wherein said source of video signals comprises a termination point of another video communications link.”

Claim 16 of the ’919 Patent recites:

16. A computer video signal communications system for selectively coupling sets of R, G, B computer color video signals from one of a plurality of computers to a separately located color monitor, said system comprising:

a transmitter including:

switching means for selectively providing a said set of said color video signals from a selected said computer, and

a first signal format converter responsive to each said color signal of a said set of color signals from said switching means for converting a signal format of each said color signal from single ended format to a balanced format;

a plurality of sets of twisted pair conductors, each set of said conductors having a first end and second end, with a said first end of each of said sets of conductors receiving a discrete color video signal from said transmitter;

a receiver coupled to said second ends of said sets of said twisted pair conductors and including:

a plurality of second signal format converters for converting a said balanced format of each said discrete color video signal from each said set of conductors from balanced to unbalanced format; and

signal means responsive to unbalanced format signals from said receiver for coupling color video signals to a color video monitor.

Claim 17 of the ’919 Patent, which is dependent to claim 16 above, recites “[a] system as set forth in claim 16 wherein said receiver includes frequency compensation means for boosting a frequency response of at least one said color video signal directly as a function of frequency.”

Claim 18 of the ’919 Patent recites:

18. A computer video signal communications system for selectively coupling a set of R, G, and B computer color video signals from one of a plurality of computers to a separately located color monitor, said system comprising:

a transmitter including:

switching means for selectively providing said set of R, G, and B computer color video signals from a selected said computer, and

a first signal format converter responsive to each said R, G and B color video signal for converting a signal format of each said R, G and B color video signal from single ended format to a balanced format;

a set of twisted pair conductors for each said balanced format R, G, and B color video signals, each said set of twisted pair conductors having a first end and a second end, with a said first end of each of said sets of twisted pair conductors receiving a discrete one of said balanced format R, G, and B color video signals from said transmitter;

a receiver coupled to said second ends of said sets of twisted pair conductors and including:

frequency compensation means for boosting a frequency response of each said R, G and B color video signal directly as a function of frequency;

a plurality of second signal format converters for converting said balanced format of each said R, G and B color video signal from each said set of twisted pair conductors from balanced to unbalanced format; and signal means responsive to siad [sic] unbalanced format signals from said receiver for coupling said R, G and B color video signals to a color video monitor.

Part Four

Claim Construction Decisions

A claim construction hearing was held on February 22 and 23, 2006. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (holding that the first issue in any patent infringement case is that of “claim construction”: the interpretation of words used in a patent’s claim, “the portion of the patent document that defines the scope of the patentee’s rights”); see also, e.g., Rockwell International Corporation v. United States, 147 F.3d 1358, 1362 (Fed.Cir.1998) (“The first step in any invalidity or infringement analysis is claim construction.”) (citations omitted). The memorandum opinion and order entered on March 15, 2006, set forth this court’s interpretation of the following, disputed, claim terms.

“Twisted pair” wiring, which is used in the ’919 patented invention to conduct analog video signals, may be either “shielded” or “unshielded.”

The term “amplifier,” as it is claimed in both the ’997 and ’919 patents, was defined as “a circuit (or a device when connected in a circuit) that draws power from a source other than the input signal and provides an output signal that reproduces the essential features of the input signal.”

The term “discrete,” as it is used in the claims of both patents, simply means that a color video signal (e.g., red) is separate or distinct from the other two color video signals (e.g., green and blue).

Finally, the phrase “for said transmitter,” as recited in claim 1 of the ’919 patent, was construed as meaning “from the signals received from the transmitter.”

Part Five

Avocent’s Motion to Strike the Supplemental Report of ClearCube’s Expert Witness, Dr. Gregg L. Vaughn

Avocent’s motion to strike the April 24, 2006 supplemental report of ClearCube’s expert witness, Dr. Gregg Vaughn, will be granted in part and denied in part.

A. Procedural Background

Discovery commenced on March 8, 2004. Pursuant to a scheduling order entered on June 25, 2004, as amended on September 15, 2004, the parties were required to disclose, no later than August 2, 2004, the identity of all specially retained or employed expert witnesses, together with a complete report under Fed.R.Civ.P. 26(a)(2)(B). Rebuttal reports were due September 20, 2004. The party bearing the burden of proof on a claim or counterclaim was required to initiate this sequence of disclosures.

Each party disclosed an expert report on August 2, 2004. Avoeent’s expert, Joseph C. McAIexander, explained how ClearCube’s accused products infringed the patents-in-suit. ClearCube’s expert, Dr. Vaughn, opined that the patents-in-suit were not valid. The parties’ rebuttal reports followed, with Dr. Vaughn rebutting McAlexander’s findings of infringement, while two individuals — McAIexander and Robert Asprey — rebutted Vaughn’s opinions concerning the validity of the patents-in-suit. On the latter issue, McAIexander and Asprey both challenged Dr. Vaughn’s validity analysis on the basis that he had failed to articulate a motivation, suggestion, or teaching to combine selected prior art references in a way that would lead to the claimed inventions.

The court’s scheduling orders did not provide for the submission of responsive expert reports after the September 20, 2004 deadline, but neither did it expressly preclude the submission of supplemental reports. Consequently, Avocent served a supplemental report addressing the issue of patent infringement on November 26, 2004.

After a period of delay in this litigation, the claim construction hearing was conducted on February 22 and 23, 2006. On the first day of the hearing, Avocent’s counsel (Donald Jackson) informed the court that Robert Asprey had died the previous month. Jackson noted that Avocent had served rebuttal reports on the issue of patent validity authored by McA-Iexander and Asprey. Even so, he sought permission to supplement McAlexander’s report, but only to the extent necessary to incorporate issues addressed by Asprey. Ken Kuffner, a witness retained by Clear-Cube to provide an expert opinion on the issue of inequitable conduct, also had died prior to the hearing. ClearCube thus sought permission to secure additional expert testimony on the issue Kuffner had been prepared to address at trial. Near the conclusion of the hearing, Avocent’s counsel also posed the following question to the court: Would Avocent’s expert (McAlexander) be allowed to incorporate the court’s construction of disputed claim terms in his patent infringement analysis? This court deferred an answer to that question.

The court’s claim construction opinion, construing the patent terms and phrases described in Part Four swpra, was entered on March 15, 2006. To advance the case toward trial, the court ordered the parties to enumerate all pre-trial procedures that needed to be completed. The parties filed a Joint Status Report on March 23, 2006, and they reiterated their agreement on one point: “supplemental” expert reports would be necessary to fill the evidentiary voids resulting from the deaths of Asprey and Kuffner. Avocent also renewed its request for leave to incorporate the court’s construction of disputed claim terms in Joseph McAlexander’s infringement reports.

This court entered a Revised Scheduling Order on March 31, 2006, accomplishing two things of relevance to the present discussion. First, the parties were ordered to designate expert witnesses to replace Asprey and Kuffner. Avocent also was granted leave to incorporate the court’s construction of claim terms into McAlexander’s infringement analysis.

McAlexander served his second supplemental report on April 10, 2006, and supplemented his earlier opinions on patent infringement in three respects: (1) the court’s construction of the claim term “amplifier” was consistent with his preexisting understanding of the term and, therefore, his earlier infringement opinions (at least with respect to the “amplifier”) were not altered; (2) a review of ClearCube’s data sheets showed that the accused products included an “amplifier,” even under Clear-Cube’s original construction of the term; and (3) a schematic showed that a receiver located at the far end of ClearCube’s transmission system provided a ground reference potential “for said transmitter,” as that phrase was construed by the court.

McAlexander’s second supplemental report also addressed ClearCube’s assertions of patent invalidity. McAlexander stated that, upon comparing his original report to Asprey’s, he found the opinions expressed in each essentially the same, with one exception: Asprey’s report had discussed in greater detail the technical differences between television and computer video systems. McAlexander thus incorporated, by reference, those portions of Asprey’s report addressing those differences.

Vaughn served his rebuttal report on April 24, 2006, addressing in one comprehensive document McAlexander’s updated infringement analysis, and the invalidity opinions of Robert Asprey, as adopted by McAlexander. Section II of Vaughn’s rebuttal addressed McAlexander’s infringement analysis premised on the court’s construction of the claim term “amplifier.” Section III addressed McAlexander’s infringement analysis premised on the court’s construction of the phrase “for said transmitter.” Section IV addressed the alleged invalidity of the ’919 patent, and Section V did the same for the ’997 patent. Avocent followed with the subject motion, asking the court to strike Sections II through V of Dr. Vaughn’s report.

B. Section II of Dr. Vaughn’s Supplemental Report — the “amplifier” non-infringement opinion

The first numbered claims of both patents-in-suit require “amplifiers” to assist in the transmission of analog color video signals. This court construed the term “amplifier” as meaning “a circuit (or a device when connected in a circuit) that draws power from a source other than the input signal and provides an output signal that reproduces the essential features of the input signal.” Following claim construction, McAlexander supplemented his earlier opinions on patent infringement to reiterate his position that ClearCube’s accused products included the claimed “amplifier.”

Not surprisingly, Dr. Vaughn’s rebuttal report took the opposite position that ClearCube’s products did not include the claimed “amplifier” and, therefore, there was no infringement. Dr. Vaughn’s opinion, set forth in Section II of his rebuttal report, built upon several analytical steps. He first focused on that aspect of the court’s construction of “amplifier” requiring reproduction of “the essential features of the input signal.” Dr. Vaughn opined that “the essential features of the input signal” meant “the frequency components of the video signal.” He then asserted that, when a computer and monitor are separated by extended distances, each “frequency component of the video signal” must be transmitted from the computer to the monitor without significant loss of amplitude. Specifically, Dr. Vaughn opined that a change in signal amplitude even as small as one-half of one percent (measured at the computer and monitor) could alter the intensity of the color displayed on the monitor’s screen. Dr. Vaughn based this opinion upon his analysis of the ’919 patent specification, as well as Joseph McAlexan-der’s testimony at the claim construction hearing.

Dr. Vaughn also noted that the patent claims at issue impose limitations on the “amplifier.” Claim 1 of the ’997 patent, for example, recites an “amplifier ... for providing a color video signal output and wherein at least a high frequency portion of each said color video signal has been amplified as a direct function of frequency,” while claim 1 of the ’919 patent recites an “amplifier” that “provides a first video signal that increases in amplitude with increasing frequency at a first output.” Dr. Vaughn understood the emphasized claim language as requiring that “each frequency component ha[ve] a higher gain than the previous frequency component.”

Finally, having laid this groundwork, Dr. Vaughn stated his non-infringement analysis in two sentences:

The circuitry on the transmitting end of a ClearCube system does not have an amplifier because it does not reproduce the essential features of the input signal nor does it provide greater gain for frequency components at successively higher frequencies. So, the circuitry on the transmitting end of a ClearCube system does not reproduce the essential features of the input signal.

1. Avocent’s argument

As a preliminary matter, the court finds that Avocent’s motion to strike all opinions set forth in Section II of Dr. Vaughn’s rebuttal report is over-inclusive. That is because the gravamen of Avocent’s complaint is directed to the second step of Dr. Vaughn’s analysis: i.e., that the amplifier must reproduce “the frequency components of the video signal” in such a manner that the voltage level of the signal at the computer, the input end of the transmission path, and the voltage level of the signal at the monitor on the other end, do not differ by even one-half of one percent. Avocent contends that this opinion raises an additional, previously undisclosed limitation on the claim term “amplifier,” purportedly supported by the patent specification and the testimony of Joseph McAlexander at the claim construction hearing. In other words, it is an untimely attempt at claim construction.

2. Conclusion

This court agrees that the following portions of Section II of Dr. Vaughn’s rebuttal report are due to be stricken: the last sentence of paragraph 5, and paragraphs 6 and 7. As will be discussed in greater detail in Part Six, Section B of this opinion infra, ClearCube has continually shifted its claim construction contentions throughout the course of litigation, foisting last-minute surprises on Avocent’s counsel and this court. Now, after claim construction and on the eve of trial, ClearCube proffers yet another, previously undisclosed claim limitation. Avocent’s motion to strike these portions of Dr. Vaughn’s rebuttal report will be granted. Cf. Atmel Corporation v. Information Storage Devices, Inc., 1998 WL 775115, at *2-3 (N.D.Cal.1998) (refusing to allow amendment to claim charts after claim construction). Avocent’s motion to strike the other portions of Section II, however, will be denied.

C. Section III of Vaughn’s Supplemental Report — the “adapter” non-infringement opinion

Claim 1 of the ’919 patent recites an “adapter ... further configured to provide a ground reference potential for said transmitter at said adapter.” This court has construed the emphasized phrase, “for said transmitter,” as meaning “from the signals received from the transmitter.” In whole cloth, therefore, claim 1 of the ’919 patent recites an “adapter ... further configured to provide a ground reference potential {from the signals received from the transmitter ] at said adapter.”

McAlexander opined in his second supplemental report that a structure called a “C-Port,” located on the receiver-side of ClearCube’s accused products, is configured to provide a ground reference potential “from the signals received from the transmitter.” Dr. Vaughn disagreed, and grounded his contrary opinion on two assertions: (1) a “common-mode filter” located on the front end of ClearCube’s transmission system did not allow recovery of the ground reference potential at the accused C-Port; and (2) there was no need to recover the ground reference potential at the C-Port, because signals in the ClearCube system were sent in “balanced” format.

Dr. Vaughn was subsequently deposed on May 1, 2006, at which time he was questioned about his analysis of Avocent’s claimed “adapter.” In pertinent part, Dr. Vaughn was asked about the concept of transmitting video signals from a transmitter to the adapter, and whether there was a “path” through which the signals could “return” to the transmitter. Dr. Vaughn opined that, indeed, the laws of physics require a “return path” for the video signals, and asserted that the “return path” in Avocent’s system was through the “twisted pair” of conductors connecting the transmitter and adapter. Dr. Vaughn also suggested that the “return path” requirement was implicit in this court’s construction of the phrase “for said transmitter.”

Avocent now moves to strike Section III of Dr. Vaughn’s supplemental report on the basis of Dr. Vaughn’s deposition testimony regarding the “return path” requirement. According to Avocent, Dr. Vaughn asserts new claim construction arguments relating to the “adapter” component that were not raised during the claim construction process.

In Section III of his report, Dr. Vaughn does state that there is a “return path” from “the adapter (or receiver)” to the transmitter, but that is merely a passing reference in the text; and this court cannot conclude from the text alone that Dr. Vaughn is engaging in claim construction, as Avocent contends. Dr. Vaughn was asked to elaborate on his opinions at deposition, however, and he explained that (i) claim 1 of the ’919 patent requires a “return path” from the adapter to the transmitter, (ii) the “return path” is “generated from the signals that are received from the transmitter,” and (in) the “return path” in Avocent’s system runs through the “twisted pair” of conductors connecting the transmitter and adapter.

1. Conclusion

To the extent Avocent seeks to preclude this testimony at trial, that is the proper subject of a motion in limine. Indeed, Avocent has filed such a motion: doc. no. 218 seeks to preclude Dr. Vaughn from testifying that the claimed “adapter” requires “twisted pair conductors to serve as a return current path from the receiver to the transmitter.” However, Avocent’s motion to strike Section III of Dr. Vaughn’s supplemental report will be denied.

D. Sections IV and V of Vaughn’s Supplemental Report — “obviousness” and the validity of the patents-in-suit

Section IV of Dr. Vaughn’s supplemental report sets forth his opinions on the validity of the ’919 patent, and Section V does the same for the ’997 patent. Dr. Vaughn disclosed his original validity report on August 2, 2004, and he then opined that it would have been obvious at the time of the subject inventions to a person of ordinary skill in the art “of video transmission” — ie., someone holding “a Bachelor of Science degree in Electrical Engineering and at least four years of experience in the field” — to combine the information contained in each binary set of prior art references identified by him. Dr. Vaughn further described, on a claim-by-claim basis, how the identified prior art combinations contained all of the elements found in the asserted claims of the patents-in-suit.

Robert Asprey and Joseph McAlexander followed with their rebuttal reports on September 20, 2004, and each challenged Dr. Vaughn’s analysis on the basis that he had failed to articulate a motivation, suggestion, or teaching for combining the selected prior art references to lead to the claimed inventions. Both noted that, while the patents-in-suit addressed the problem of transmitting computer-generated video signals over extended distances, Vaughn repeatedly cited prior art references directed to the transmission of other types of signals, such as television signals. As-prey’s report provided a particularly detailed discussion of this subject matter.

Additionally, for each binary set of prior art references identified by Dr. Vaughn, McAlexander’s report attempted to demonstrate that the references taught entirely “different solutions for transmitting video signals” than did the patents-in-suit — a further reason to conclude that there was no motivation, suggestion, or teaching to combine elements from the selected prior art references.

Following the death of Asprey, and in accordance with the Revised Scheduling Order entered on March 31, 2006, McAlex-ander incorporated eight passages from Asprey’s report into his second supplemental report. Those passages all involved Asprey’s discussion of the differences between computer-generated video signals and television signals, in the context of challenging the motivation-suggestion-teaching element of Dr. Vaughn’s invalidity analysis.

Dr. Vaughn served his rebuttal report in response to Asprey’s opinions, as thus incorporated by McAlexander. Avocent now asserts two independent arguments to strike Sections IV and V of Dr. Vaughn’s latest report: (1) the scope of Dr. Vaughn’s rebuttal exceeded that of As-prey’s opinions, as incorporated by McA-lexander; and (2) Dr. Vaughn cited five new “prior art” references in his rebuttal report.

1. Scope of Dr. Vaughn’s rebuttal

Rule 26(a)(2)(C) of the Federal Rules of Civil Procedure provides that “rebuttal disclosures are those that relate to evidence that is ‘intended solely to contradict or rebut evidence on the same subject matter identified by another party’ in its expert disclosures.” Aircraft Gear Corporation v. Marsh, 2004 WL 1899982, at *5 (N.D.Ill. Aug.12, 2004); see also Gilbane Building Company v. Downers Grove Community High School District No. 99, 2005 WL 838679, at *11 (N.D.Ill. April 5, 2005) (same).

a. Conclusion

The court finds that the following paragraphs in Sections IV and V of Dr. Vaughn’s supplemental report rebut As-prey’s contentions regarding the differences between computer video signals and television signals: ¶¶ 20, 22, and 41. The following paragraphs also rebut Asprey’s contentions, but only to the extent that each incorporates, by reference, paragraph 22: ¶¶ 30, 33, 37, 43, and 48. Avocent’s motion to strike these portions of Dr. Vaughn’s supplemental expert report is denied.

However, Avocent’s motion to strike all other opinions set forth in Sections IV and V of Dr. Vaughn’s supplemental report will be granted, because those portions extend beyond the limited subject matter incorporated into McAlexander’s invalidity analysis.

2. New “prior art”

Avocent also moves to strike Sections IV and V of Dr. Vaughn’s supplemental report on the basis that the report includes five new “prior art” references that were not previously disclosed. These references are: the ‘VGA to RGB Converter” article (cited in paragraph 22 of the Vaughn supplemental report); the “Sun-3” article (¶ 22); “Fast Ethernet Alliance” (¶ 23); “Application Notes” (¶ 25); and the “EDN Magazine” articles (¶ 25).

Paragraphs 23 and 25 of the Dr. Vaughn’s supplemental report already have been stricken. Accordingly, the references cited in those paragraphs — the Fast Ethernet Alliance, Application Notes, and the EDN Magazine articles — will not be discussed here. On the other hand, the “VGA to RGB Converter” article and the “Sun-3” article are cited in paragraph 22 of the Vaughn supplemental report. So far, that paragraph has survived Avocent’s motion to strike.

Dr. Vaughn cites these articles to illustrate a purported flaw in Asprey’s opinion that there are important differences between computer and television video signals. This was in direct rebuttal to Asprey’s opinions, as incorporated by McAlexander. Avocent attempts to characterize these references as previously undisclosed “prior art” references to the patents-in-suit, but that argument is misleading. Dr. Vaughn does not attempt to combine elements from the ‘VGA to RGB Coverter” and “Sun-3” articles with elements from other prior art references to show the “obviousness” of the patents-in-suit. The articles merely are cited to show what a person of ordinary skill in the relevant technology allegedly would have known in 1996.

Avocent also advances the argument that it did not have the opportunity to reply to Dr. Vaughn’s invalidity analysis under the court’s latest Revised Scheduling Order. Therefore, Avocent contends that the previously undisclosed references should be stricken. This court disagrees. After claim construction, the parties filed a Join Status Report, wherein Avocent agreed that its “supplemental” report on invalidity would be disclosed first, followed by ClearCube’s rebuttal. Avocent cannot complain about the sequence of expert disclosures under these circumstances.

Part Six

Infringement Contentions

The resolution of a patent infringement claim entails a two-step analytical progression. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir.1995) (en banc). The first step is that of “claim construction”: the interpretation of words used in a patent’s claims, “the portion of the patent document that defines the scope of the patentee’s rights.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); see also, e.g., Rockwell International Corporation v. United States, 147 F.3d 1358, 1362 (Fed.Cir.1998) (“The first step in any invalidity or infringement analysis is claim construction.”) (citations omitted).

The second step requires a comparison of each element of the properly construed claim to the device accused of infringing. See Markman, 52 F.3d at 976. At this step of the analysis, a plaintiff may establish infringement in either of two ways: it may show that the asserted claim reads literally on the accused device, or it may show infringement under the so-called “doctrine of equivalents.” See, e.g., Becton Dickinson and Company v. C.R. Bard, Inc., 922 F.2d 792, 796 (Fed.Cir.1990). “To establish literal infringement, every limitation set forth in a claim must be found in an accused product, exactly.” Southwall Technologies, Inc. v. Cardinal IG Company, 54 F.3d 1570, 1575 (Fed.Cir. 1995) (citing Becton Dickinson, 922 F.2d at 796). Under the doctrine of equivalents, every limitation in the claim must be found in the accused device, at least by “substantial equivalent.” Becton Dickinson, 922 F.2d at 796. Stated more fully,

[a]n accused product that does not literally infringe a claim may infringe under the doctrine of equivalents if “it performs substantially the same function in substantially the same way to obtain the same result.” Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097, 85 USPQ 328, 330 (1950). Only if an accused product contains specific structure which meets all limitations of an asserted claim directed to structure, at least equivalently, can that product infringe under the doctrine of equivalents. Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 935, 4 USPQ2d 1737, 1739 (Fed.Cir.1987) (in banc), cert. denied, 485 U.S. 961, 108 S.Ct. 1226, 99 L.Ed.2d 426 (1988).

Southwall Technologies, 54 F.3d at 1579.

While claim construction is an issue of law, see Markman, 52 F.3d at 970-91, the determination of an allegation of infringement, whether literal or under the doctrine of equivalents, is a question of fact. See, e.g., Elekta Instrument, 214 F.3d at 1306.

“Summary judgment on the issue of infringement is proper when no reasonable jury could find that every limitation recited in a properly construed claim either is or is not found in the accused device either literally or under the doctrine of equivalents.” PC Connector Solutions LLC v. SmartDisk Corporation, 406 F.3d 1359, 1364 (Fed.Cir.2005) (citing Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353-54 (Fed.Cir.1998)).

A. Avocent’s Motion for Partial Summary Judgment Declaring that Clear-Cube’s Accused Products Include the “Amplifier" Element Recited in Claim 1 of the ’997 Patent, and, Claims 1 and, 16 of the ’919 Patent

Claim 1 of the ’997 patent is directed to the problem of transmitting computer-generated analog color video signals over extended distances. A plurality of computers is located at the front end of the system, and each computer provides a set of color video signals to a “switch,” which selectively provides each set of color video signals to a “transmitter.” The “transmitter,” in turn, includes an element called the “amplifier.” Claim 1 of the ’997 patent recites, in part, “a signal transmitter at a first location responsive to said output of a set of said color video signals, said transmitter, including an amplifier for each said color video signal of one of said sets for providing a color video signal output.”

Claim 1 of the ’919 patent also is directed to the problem of transmitting computer-generated analog color video signals over extended distances. A source of computer-generated color video signals is located at the front end of the system. A “transmitter” is located immediately thereafter, and it comprises a plurality of “amplifiers.” Claim 1 of the ’919 patent recites, in part, “a video transmitter comprising a plurality of amplifiers, one of each said amplifiers for each of said red, green, and blue video signals.” Claim 6 of the ’919 patent is dependent on claim 1.

At claim construction, the term “amplifier,” as recited in these claims, was construed as meaning “a circuit (or a device when connected in a circuit) that draws power from a source other than the input signal and provides an output signal that reproduces the essential features of the input signal.”

Avocent’s subject motion for partial summary judgment asks the court to declare that ClearCube’s accused products satisfy “the ‘amplifier’ limitation” of claims 1 and 6 of the ’919 patent and claim 1 of the ’997 patent. The scope of the motion is tightly circumscribed. Avocent seeks to isolate the “amplifier,” as that term has been construed by this court, from the surrounding claim language. Avocent then turns to ClearCube’s accused products. The ClearCube “Cage” is a centralized chassis that holds up to eight computers. In ClearCube’s terminology, each computer is called a “Blade.” Each Blade, in turn, transmits analog color video signals (as well as other types of signals) to a “transmitter,” which ClearCube calls a “Backpack.”

The precise question before the court is whether Avocent’s claimed “amplifier” also can be identified in ClearCube’s “Backpack.” If so, and there is no fact dispute, Avocent’s motion for partial summary judgment is due to be granted.

1. Infringement analysis

A circuit diagram assigned the Bates stamp number “CC 41852” represents a portion of the ClearCube Backpack. The diagram illustrates eight sets of three circuits, or twenty-four circuits in all. Each set of three circuits receives signal information from one of the eight computers, or “Blades,” located at the front end of the ClearCube system. The following schematic illustrates the three circuits that receive signal information from computer number 8 (designated “CP8” in the drawings):

The top circuit receives three types of signals: a “polarity” signal, a horizontal synchronization signal, and a green analog video signal (“GRN”). The middle circuit also receives three types of signals: a “blanking” signal, a horizontal synchronization signal, and a red analog video signal (“RED”). The third circuit illustrated on the bottom of the diagram receives a vertical synchronization signal, a horizontal synchronization signal, and a blue analog video signal (“BLU”).

a. “a circuit (or a device ivhen connected in a circuit) ”

The claimed “amplifier,” as construed by this court, must first and foremost have “a circuit (or a device when connected in a circuit).” It is undisputed that Clear-Cube’s Backpack has twenty four “circuits,” including the three circuits illustrated above.

b. “that draws power from a source other than the input signal ”

This clause may be parsed into two elements: (1) there must be an “input signal” to each circuit; and (2) the circuit must “draw[] power from a source other than the input signal.” The Backpack circuitry clearly receives an “input signal” from the computers, or “Blades,” located at the front end of ClearCube’s transmission system. It also is undisputed that Clear-Cube’s circuit “draws power from a source other than the input signal.” At oral argument, Avocent’s counsel identified the symbol “5V,” standing for 5 volts, directly above the operational amplifiers located toward the right of the subject circuits. Avocent asserts, and ClearCube does not dispute, that this symbol represents the point at which power is drawn into the circuitry from a source other than the input signal. The actual power source is illustrated in another diagram, assigned Bates stamp number “CC 41851,” under the heading “Power Supply No. 1 Connector.”

c.“and