Intellectual Ventures I, LLC v. Canon Inc. (143 F. Supp. 3d 143, 2015)

United States District Court for the District of Delaware 2015-11-09

Patents

Citations

Full opinion text

MEMORANDUM OPINION

ROBINSON, District Judge

I. INTRODUCTION

On March 25, 2013, plaintiffs Intellectual Ventures I, LLC and Intellectual Ventures II, LLC (collectively “IV”) filed suit in this district against defendants Canon Inc., Canon U.S.A., Inc., and Canon Solutions America, Inc. (collectively “Canon”), alleging infringement of nine patents: U.S. Patent Nos. 5,444,728 (“the ’728 patent”), 6, 130,761 (“the ’761 patent”), 6,435,686 (“the ’686 patent”), 6,650,432 (“the ’432 patent”), RE43,086 (“the ’086 patent”), 7,315,406 (“the ’406 patent”), 5,712,870 (“the ’870 patent”), 6,754, 195 (“the ’195 patent”), and 6,977,944 (“the ’944 patent”). (D.I. 1) IV amended its complaint on April 15, 2013 and January 14, 2014, adding U.S. Patent Nos. 7,817,914 (“the ’914 patent”) and RE44,528 (“the ’528 patent”), respectively. (D.I. 7; D.I. 46) The ’686 patent was dismissed from the case on January 10, 2914 (D.I. 43), and the ’195 patent was dismissed from the case on March 10, 2015. (D.I. 269) Ten patents (“the patents-in-suit”) remain asserted in the present case.

Following two Markman hearings, claim construction orders issued on January 23, 2015 and March 27, 2015. (D.I. 264; D.I. 272) Presently before the court are five motions for summary judgment, Canon’s motion to strike portions of Mark N. Hor-ensteins’ Supplemental Expert Report (regarding the ’728 patent) (D.I. 334), and Canon’s motion to sever and stay the ’914 patent (D.I. 415). The court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).

II. BACKGROUND

A. The Parties

Plaintiffs IV I and II are limited liability companies organized and existing under the laws of the State of Delaware, with their principal place of business in Belle-vue, Washington. (D.I. 46 at ¶¶ 1-2) IV I owns the ’728, ’761, ’432, ’086, ’406, ’870,-’944, and ’528 patents. (Id. at ¶ 7) TV II owns the ’914 patent. (Id.)

Defendant Canon Inc. is a corporation organized and existing under the laws of Japan, with its principal place of business in Tokyo, Japan. (Id. at ¶ 3) Defendants Canon U.S.A., Inc. and Canon Solutions America, Inc. (collectively with Canon, Inc., “Canon” or “defendants”) are wholly-owned and controlled subsidiaries of Canon Inc., and are corporations organized and existing under the laws of the State of New York, with their principal place of business in Lake Success, New York. (Id. at ¶¶ 4-5)

B. The Patents-in-Suit

The ’870 and ’944 patents (“the WiFi patents”) generally relate to wireless networking technologies such as quarterary phase shift keyed demodulation, methods for transitioning between these modulations, the use of channel impulse response estimates and the length of time necessary to achieve desired spectral characteristics while minimizing complexity. The remaining eight patents-in-suit (“the non-WiFi patents”) cover a range of technologies including laser driver circuits, scanning circuitry and motor timing, scanner software, camera software, and wireless communications, which patents are asserted against Canon printers, scanners, and cameras.

III. STANDARD OF REVIEW

“The court shall grant summary judgment if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 n. 10, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). A party asserting that a fact cannot be— or, alternatively, is — genuinely disputed must be supported either by citing to “particular parts of materials in the record, including depositions, documents, electronically stored information, affidavits or declarations, stipulations (including those made for the purposes of the motions only), admissions, interrogatory answers, or other materials,” or by “showing that the materials cited do not establish the absence or presence of a genuine dispute, or that an adverse party cannot produce admissible evidence to support the fact.” Fed. R. Civ. P. 56(c)(1)(A) & (B). If the moving party has carried its burden, the nonmovant must then “come forward with specific facts showing that there is a genuine issue for trial.” Matsushita, 475 U.S. at 587, 106 S.Ct. 1348 (internal quotation marks omitted). The court will “draw all reasonable inferences in favor of the non-moving party, and it may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).

To defeat a motion for summary judgment, the non-moving party must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita, 475 U.S. at 586-87, 106 S.Ct. 1348; see also Podobnik v. U.S. Postal Service, 409 F.3d 584, 594 (3d Cir.2005) (stating party opposing summary judgment “must present more than just bare assertions, conclusory allegations or suspicions to show the existence of a genuine issue”) (internal quotation marks omitted). Although the “mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment,” a factual dispute is genuine where “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). “If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted.” Id. at 249-50, 106 S.Ct. 2505 (internal citations omitted); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (stating entry of summary judgment is mandated “against a party who fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial”).

IV. THE WiFi PATENTS

Generally, the WiFi patents relate to wireless networking technologies where wireless networks connect devices (laptops) to each other and “access points.” Devices and access points communicate through radio signals, broadcast on particular frequencies. These signals encode “frames” (i.e., packets) with information arranged in specific patterns and fields. For instance, frames generally include a field for a destination address, specifying to whom the frame is being sent. The exact order and nature of the fields in each frame, however, are specified by the relevant wireless standard.

The background standards for the patents-in-suit are those issued by the Institute of Electrical and Electronic Engineers (“IEEE”) 802.11 wireless networking working group, often called “wi-fi.” IEEE 802.11 is a standard for wireless communications that is comprised of specifications published and continuously updated by the IEEE. (0.1. 292 at 9) The first IEEE standard was published in 1997 and the IEEE continued to release subsequent standards, typically with faster transmission rates using additional technology, including that developed by the inventors of the patents-in-suit.

A. The ’870 Patent

The ’870 patent generally relates to receiving and demodulating radio frequency (“RF”) signals on a wireless network. (Abstract) It is directed to a device for detecting and decoding packets (i.e. frames) in a wireless network. In particular, it discloses a transceiver that may acquire and decode the preamble, header, and data, and check fields of a packet transmitted using BPSK and QPSK modulation. (4:44-56) The transceiver includes antennae, RF/IF converters, amplifiers, modulator/demodulators, and a baseband processor (which itself includes analog-to-digital converters, spreader/despreaders, and other components), all of which comprise a device that acquires and decodes incoming packets from radio waves and transmits outgoing packets by radio waves. (4:59-5:30) Claim 1 recites:

A circuit for detecting a message header in a signal which has been transmitted using direct sequence spread spectrum modulation, comprising a single device having:

means for receiving an analog signal having modulated thereon in a spread spectrum format a message having a header portion and a data portion;

means for converting said analog signal into a digital signal;

means for demodulating the header of the digital signal using digital binary phase shift keyed (BPSK) demodulation and for demodulating the data portion of the same message using quarterary phase shift keyed demodulation (QPSK); means contained on said single device for timing a transition from BPSK [modulation] to QPSK modulation; and, means for providing the demodulated data signal to a media access control (MAC) layer.

(10:13-30)

1. Indefiniteness

The definiteness requirement is rooted in § 112, 2, which provides that “the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” “A determination of claim indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the construer of patent claims.” Personalized Media Comm., LLC v. Int’l Trade Com’n, 161 F.3d 696, 705 (Fed.Cir.1998). Reiterating the public notice function of patents, the Supreme Court recently explained that “a patent must be precise enough to afford clear notice of what is claimed, thereby ‘apprising] the public of what is still open to them.’ ” Nautilus, Inc. v. Biosig Instruments, Inc., — U.S. -, 134 S.Ct. 2120, 2129, 189 L.Ed.2d 37 (2014) (citations omitted). In balancing the need for clarity with the inherent limitations of the English language, 35 U.S.C. § 112, 2 requires “that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Id.

Canon alleges that the “means ... for timing” of claims 1 and 3 and the “timer” limitations of the remaining claims are indefinite. (D.I. 292 at 23) In support, Canon submits that IV’s expert, Dr. Williams, argued that the “means ... for timing” term requires a “single receive path,” the structure for which is not disclosed in the ’870 specification of file history. (Id. at 24-25; D.I. 295, ex. 4 at 243:14-245:5) Because the court construed “means ... for timing” as a means-plus-function term, the term is indefinite as a matter of law without adequate structure. (D.I. 264 at 15-16; D.I. 292 at 15) Specifically, while “timer” is not a means-plus-function term, Canon argues it is nonetheless indefinite as TV’s expert argues that a “timer” also requires a “single receive path” without offering a definition of such “single receive path.” (D.I. 295, ex. 10 at ¶ 70; id. at ex. 4 at 235:7-10)

IV responds that the court already rejected Canon’s indefiniteness arguments during claim construction. (D.I. 310 at 31) Importantly, Canon’s expert offers no new opinions regarding indefiniteness to support its renewed argument. (D.I. 311, ex. 2 at 170:23-171:11) As IV points out, the court may change its mind, but Canon has offered no basis for the court to alter its opinion. (D.I. 310 at 31) TV’s expert did not mean “single receive path” to be a substantive claim limitation, but rather used it to distinguish prior art in the context of obviousness. (D.I. 311, ex. 3 at 270:10-271:1, 277:7-23, 278:19-279:2, 279:12-20, 280:20-281:7) In particular, IV’s expert stated that the ’870 patent has a means for timing to “allow for a single receive path,” but never excluded the possibility of multiple paths. (D.I. 312, ex. 2 at ¶ 62; D.I. 311, ex. 3 at 236:9-17, 280:20-281:7)

The court agrees with IV in that Canon’s indefiniteness arguments were considered in its claim construction order and Canon offers no fresh reasons to compel a different conclusion. Essentially, this portion of Canon’s motion for summary judgment equates to an untimely motion for reargument. Nonetheless, Canon’s arguments regarding IV’s expert’s use of the words “single receive path” were taken out of context. Indefiniteness-is not based on an expert’s utilization of a phrase to contrast the invention with prior art. Rather, § 112, ¶ 2 requires “that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, 134 S.Ct. at 2129. As .the court previously held, this term meets that standard in light of the disclosures contained within the specification. (D.I. 264 at ¶ 26). The court, therefore, maintains that these claims are sufficiently definite.

2. Infringement

When an accused infringer moves for summary judgment of non-infringement, such relief may be granted only if one or more limitations of the claim in question does not read on an element of the accused product, either literally or under the doctrine of equivalents. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1376 (Fed.Cir.2005); see also TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed.Cir.2002) (“Summary judgment of nonin-fringement is ... appropriate where the patent owner’s proof is deficient in meeting an essential part of the legal standard for infringement, because such failure will render all other facts immaterial.”). Thus, summary judgment of noninfringement can only be granted if, after viewing the facts in the light most favorable to the non-movant, there is no genuine issue as to whether the accused product is covered by the claims (as construed by the court). See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed.Cir.1999).

a. Timer/timing limitations

Canon moves for summary judgment of non-infringement, asserting the accused products do not meet the timing/timer limitations of the ’870 patent. (D.I. 315 at 9) In support of this proposition, Canon argues that under the court’s claim construction, the claims of the ’870 patent require a timer for transitioning between BPSK and QPSK demodulation and the accused products do not use time to determine the transition between modulation schemes. (Id.) Canon submits that various expert witnesses explain that the accused products do not use a timer, rather, the accused products count the number of bits using a counter and transition only when the correct number of bits have passed, irrespective of the time. (D.I. 294, ex. 1 at ¶ 392; D.I. 316, ex. 13 at 64:12-25, 143:3-9 (Marvell’s 30(b)(6) witness); id. at ex. 14 at 221:3-222:4 (IV’s expert)) Specifically, the “accused products will not transition from BPSK to QPSK if the required number of bits are not received (i.e., the accused products will stop demodulation) .... [T]he accused products determine, at each clock pulse, whether a bit has been received, and will increment a counter only if that bit has been received.” (D.I. 398) (emphasis in original) Canon relies on its expert, Dr. Shoemake, who stated' in his opening report that the “bit counter is incremented for each bit that is received, until the header- cnt signal has reached 48,” and that the transition occurs after the counter reaches 48. (D.I. 294, ex. 1 at ¶¶ 339-40)

IV responds that the timer hardware and software in the' accused products counts 48 symbol clock cycles prior to transitioning. (D.I. 355, ex. 3 at ¶¶ 91-102; D.I. 354, ex. 12 at 71:2-72:9, 75:3-23, 140:10-141:10) Because the counter has a clock signal with a period of one millisecond, it is equivalent to a digital timer. (D.I. 354, ex. 13 at 71:5-72:8, 83:4-85:5; D.I. 354, ex. 14 at 35; D.I. 355, ex. 5 at ¶ 10) IV’s witness testified that the accused products work in concert with the signaling field to switch the receiver between BPSK and QPSK at the correct time, which is consistent with the court’s definition. (D.I. 355, ex. 3 at ¶ 137) The inventor of the patent also described the counter as “counting something in time.” (D.I. 354, ex. 15 at 71:22-72:23; see also D.I. 355, ex. 3 at ¶ 99) IV’s expert explained that the counter runs for 48 microseconds because there is a set number of symbols prior to the transition. (D.I. 354, ex. 12 at 140:10-141:10; 71:2-72:9; D.I. 355, ex. 3 at ¶ 96) In other words, the reason the counter is incremented once per bit is that, as Dr. Shoemake himself explained, the counter is incremented on each symbol clock pulse, which corresponds to 1 bit at the 1 MB/s BPSK data rate, but does not depend upon a bit being received. (D.I. 294, ex. 1 at ¶ 408)

The court agrees with IV as there is no evidence that the accused product stops demodulating if a bit is not received. Lacking such evidence, the court declines to find that, because Canon’s products count 48 bits (at a rate of one bit/second) rather than 48 seconds, they are not “timing” the transition between modulation schemes. For this reason, Canon’s motion that its products do not infringe because they lack a “timer/means for timing” is denied.

Canon additionally argues that summary judgment of non-infringement is appropriate because IV has failed to identify a “processor interface” that transitions from BPSK to QPSK. However, the court finds that a question of fact exists as to whether the processor in the accused devices acts like the processor interface identified as the “corresponding structure” in the court’s claim construction. The court construed the “means contained on said single device for timing a transition from BPSK modulation to QPSK modulation” as requiring a “processor interface.” (D.I. 264 at 15-16) In other words, the processor interface is the corresponding structure for the means for timing a transition. In arguing that IV has failed to identify a “processor interface” that transitions from BPSK to QPSK, Canon alleges that IV’s expert identifies a processor (D.I. 316, ex. 15 at ¶ 101) rather than a processor interface that transitions from BPSK to QPSK. (D.I. 315 at 13) IV responds that the SFD field in the accused products operates as a “signaling field,” and that when the field is detected, the device counts 48 microseconds and then transitions from BPSK to QPSK. (D.I. 353 at 11) IV further argues that the court intended the processor interface to be able to time transitions and perform computing. (Id.) Although IV appears to concede that the accused devices do not have a processor interface, IV’s experts argue that the accused processor acts like a processor interface. (D.I. 354, ex. 16 at 293:12-25, 295:15-296:1, 296:10-297:1, 297:9-19; D.I. 355, ex. 3 at ¶ 101) In fact, both parties’ experts agree that a processor interface is different from a processor. (D.I. 294, ex. 1 at ¶ 112, D.I. 316, ex. 16 at 96:1-97:25, ex. 14 at 216:12-217:4; D.I. 295, ex. 11 at 6:50-62) Additionally, the ’870 specification describes a processor interface, which is separate from the processor. (D.I. 295, ex. 11 at 8:62-65, 6:60-62) There is, therefore, a disputed question of fact that precludes summary judgment on this ground, as it is unclear whether the processor in the accused devices acts like the processor interface identified as the “corresponding structure” in the court’s claim construction. Canon’s motion for summary judgment on this theory is denied.

Finally, Canon contends that TV’s expert argued that a “single receive” path is a claim limitation. (D.I. 316, ex. 14 at 224:16-225:4, 235:11-236:25, 237:14-18; D.I. 294, ex. 3 at ¶ 17) Canon’s expert offered the unrebutted opinion that the accused products do not have single receive paths. (D.I. 316, ex. 16 at 207:6-23; D.I. 294, ex. 3 at ¶¶ 30-33) IV responds that Canon misconstrues IV’s expert’s attempt to contrast the claimed invention from the prior art in the background of the ’870 patent, rather than proffering a substantive claim limitation. (D.I. 353 at 21, 23) Further, IV argues, even if “single receive” path was a limitation, Canon’s devices would still infringe because a “single receive” path, as described in the patent, allows for multiple antenna and separate filtering and tuning. (’870 patent, fig. 2) Moreover, there is no indication that the accused products have multiple antennas. (D.I. 354, ex. 11 at 67:14-17)

The court acknowledges that there appears to be a “single receive” path in the sense that the claims require a timer to time the transition from BPSK to QPSK ex ante rather than demodulating along separate parallel paths and then reconciling BPSK and QPSK ex post. However, the term “single receive” does not appear in the ’870 patent. More importantly, there is no “single receive” path limitation in the claims of the ’870 patent. As discussed supra, Canon’s arguments regarding IV’s expert’s use of the words “single receive path” were taken out of context. Therefore, the court declines to grant summary judgment on this ground.

b. Single device limitation

Canon argues that the asserted claims of the ’870 patent are not infringed because the accused components are not on the same “single device.” (D.I. 315 at 17) The court construed “single device” as “a single packaged device or module that may contain one or more integrated circuit chips.” (D.I. 264 at 10-11) Neither party disputes that the accused devices do not include all of the components in a single module given that the wireless module is separate from the antenna. (D.I. 294, ex. 1 at ¶ 296; D.I. 316, ex. 16 at 27:3-28:22) Canon alleges that Dr. Williams’ (IV’s expert’s) opinion that devices on different boards that are “packaged together in some sense” are part of a “single device” (D.I. 316, ex. 17 at ¶ 4) is contrary to the court’s claim construction. (D.I. 315 at 17) Moreover, Canon alleges that Dr. Williams’ reliance on datasheets from third-party Marvell cannot establish a link between the datasheets and the accused products. (D.I. 316, ex. 14 at 166:15-20, 198:13-199:17)

IV responds that Dr. Williams addressed the single device limitation in his opening report (D.I. 355, ex. 3 at ¶¶ 54-60, 63-65, 126, and 156) and that Canon attempts to make this argument apply to all claims, when only claims 1 and 3 require a single device. IV argues that there is nothing in the court’s construction of “analog receiver,” which does appear in all claims, that requires that antenna must be part of the analog receiver. Moreover, the product upon which Canon relies to make its argument does not use the accused chipset. (D.I. 295, ex. 1 at ¶ 295; D.I. 355, ex. 3 at ¶ 50) Finally, the corporate desig-nee on the Canon accused products admitted that the wireless modules include an antenna. (D.I. 354, ex. 11 at 67:11-13) Even if the antenna were on a different sub-module, the mother board is a “level" of packaging” and can itself be a module. (D.I. 355, ex. 5 at ¶¶ 3, 7; D.I. 294, ex. 1 at ¶ 297)

In addition, IV argues that Canon’s da-tasheets demonstrate that the antenna is part of a single module (D.I. 355, ex. 3 at ¶ 74, ex. 5 at ¶¶ 5-6, ex. 3 at ¶¶ 60, 73; D.I. 354, ex. 17 at CAN0120654, ex. 18 at CAN0120924-25), and that the court implicitly rejected Canon’s argument that the antenna is on a different device and, therefore, has no structure by finding that the antenna has a corresponding structure. Finally, IV argues that its expert did establish a link between the datasheets and the accused products (D.I. 355, ex. 3 at ¶ 66) and was reinforced by testimony of Canon’s corporate witness. (D.I. 354, ex. 11 at 30:7-20)

Like the “single receive” path discussed above, the claims of the ’870 patent do not contain a specific “single device” limitation. While integration into a single device is disclosed as a preferred embodiment, the ’870 patent specifies that “the present invention is not necessarily limited to a single device.” (6:55-56) The court maintains its claim construction that a “single device” is “a single packaged device or module that may contain one or more integrated circuit chips.” (D.I. 264 at 10-11) The ultimate issue is whether the antennas on the accused devices are part of the “single device.” The court acknowledges that, while the experts agree that the accused devices do not include all of the components in a single module, they do not agree on this ultimate issue. Whether the antennas on the accused devices are part of the “single device” is a question of fact for the jury. This issue, therefore, is not appropriate for resolution by summary judgment.

c. Doctrine of equivalents

For there to be infringement under the doctrine of equivalents, the accused product or process must embody every limitation of a claim, either literally or by an equivalent. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 1054, 137 L.Ed.2d 146 (1997)..An element is equivalent if the differences between the element and the claim limitation are “insubstantial.” Zelinski v. Brunswick Corp., 185 F.3d 1311, 1316 (Fed.Cir.1999). One test used to determine “insubstantiality” is whether the element performs substantially the same function in substantially the same way to obtain substantially the same result as the claim limitation. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). This test is commonly referred to as the “function-way-result” test. The mere showing that an accused device is equivalent overall to the claimed invention is insufficient to establish infringement under the doctrine of equivalents. The patent owner has the burden of proving infringement under the doctrine of equivalents and must meet its burden by a preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 889 (Fed.Cir.1988) (citations omitted).

Canon argues that summary judgment of non-infringement is appropriate under the doctrine of equivalents for all claims and “statutory” equivalents for the means plus function limitations of claims 1 and 3. (D.I. 315 at 20) Specifically, Canon argues that IV did not provide sufficient expert disclosure regarding infringement under the doctrine of equivalents or literal infringement of the means-plus-function limitations based on statutory equivalents. (Id.) While Canon admits that IVs expert did mention doctrine of equivalents for each disputed limitation, Canon proffers that the analysis is limited to a single “boilerplate” paragraph. (D.I. 316, ex. 16 at ¶¶ 63, 68, 95, 142; see also id. at ex. 14 at 211:25-212:23, 213:18-24, 217:16-219:2) Canon opines that the law is “clear” that this conclusory testimony is insufficient to establish infringement under the doctrine of equivalents.

IV responds that its expert provides ample analysis of the doctrine of equivalents in his opening report (see D.I. 355, ex. 3 at ¶¶ 91-102, ex. 5 at ¶¶ 10-14), and even refers back to this initial analysis later when addressing the “timer” limitations. (D.I. 312, ex. 3 at ¶¶ 137-41) IV avers that its expert re-addressed the issue in his supplemental report. (D.I. 355, ex. 5 at ¶ 10)

The court agrees with IV to the extent that Dr. Williams has provided sufficient detail to establish at least a genuine issue of material fact. While Dr. Williams initially addresses the doctrine of equivalents and the “means for timing” limitation in a conclusory fashion as Canon asserts (D.I. 355, ex. 3 at ¶¶ 91, 95), he then intersperses doctrine of equivalents analysis throughout his analysis regarding this limitation. (D.I. 355, ex. 3 at ¶¶ 91-102) Specifically, Dr. Williams intersperses doctrine of equivalents discussion as he describes the operation of the means for timing in the accused products, explains that any differences between the structure disclosed in the ’870 patent for timing the transition and the accused products are insubstantial, and describes the operation of the timing means for the accused products. (IcL) Based on this analysis, Dr. Williams then concludes that the accused products “contain a processor which processes the header, and times the transition from header to data, in a manner which is identical to or equivalent to the processor interface 114 of the 870 Patent.” (Id. at ¶ 101) He then opines that the accused products “time the transition from BPSK to QPSK modulation in a manner that is identical to or equivalent to the manner taught by the [’]870 Patent.” (Id. at ¶ 102) Dr. Williams additionally addressed this limitation in his supplemental report, responding to Dr. Shoemake’s analysis that the accused products count bits rather than timing the demodulation transition. (D.I. 355, ex. 5 at ¶ 10) This dispute between experts illuminates an issue of fact for the jury, whether IV can satisfy its burden in proving the accused products embody every limitation of the claims. Specifically, whether the differences between this element of the accused products and the claim limitations of the ’870 patent are “insubstantial.” Zelinski, 185 F.3d at 1316. Further, the court finds Dr. Williams’ analysis is more than just “conclusory” and provides sufficient explanation for this theory to proceed to trial. Summary judgment of non-infringement under this theory is not appropriate.

d. Products in dispute

Canon alleges that Dr. Williams did not include in his expert report numerous products listed in IV’s- infringement contentions, and seeks summary judgment of non-infringement with respect to such “omitted” products. (D.I. 315 at 25) Because the parties have presented a very confusing record for the court in this regard, IV will be required to submit to the court the final list of accused products before the pretrial conference, so that the court can address at the conference the evidentiary issues raised by Canon’s motion. In this regard, however, the court notes that a claim of infringement relating to a product identified in IV’s infringement contentions but not in its expert’s report shall be considered dismissed from the case with prejudice; i.e., it cannot be later asserted by IV against Canon in connection with the patents-at-issue. Judgment shall be entered in favor of Canon under these circumstances only if Canon has offered a substantive analysis of non-infringement to which IV has not responded in kind.

B. The ’944 Patent

The ’944 patent addresses backwards compatibility between IEEE 802.11 b “Iegacy” devices and newer IEEE 802.11g “enhanced” devices. (Abstract; D.I. 310 at 8) Both legacy and enhanced devices recognize a Clear-to-Send (“CTS”) signal that indicates that the shared communication medium is available for use. The ’944 patent attempted to use this signal to allow an 802.11 g device, which can also transmit using enhanced signals that are not recognized by 802.11 b devices, to broadcast a CTS signal addressed to itself. This process would ensure the availability of the communication medium for a designated period of time despite the inability of 802.11 b devices to recognize the subsequent enhanced transmission. Independent claim 7 recites:

A station comprising:

(a) a receiver for monitoring a shared-communications medium for an opportunity to transmit a first signal and a second signal; and

(b) a transmitter for:

(1) transmitting said second signal in accordance with a second modulation scheme on said shared-communications medium, wherein:

(i) said second signal conveys a frame indicating clear to send that is addressed to the sender of said frame indicating clear to send; and

(ii) said frame indicating clear to send comprises a duration field that has a value based on the expected length of time required to transmit at least one data frame; and

(2) transmitting said first signal in accordance with a first modulation scheme on said shared-communications medium after said second signal, wherein said first signal conveys said at least one data frame; wherein said frame indicating clear to send and said at least one data frame are addressed to different stations.

(13:45-65)

1. Anticipation

Under 35 U.S.C. § 102(b), “[a] person shall be entitled to a patent unless the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States.” The Federal Circuit has stated that “[t]here must be no difference between the claimed invention and the referenced disclosure, as viewed by a person of ordinary skill in the field of the invention.” Scripps Clinic & Research Found, v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed.Cir.1991). In determining whether a patented invention is explicitly anticipated, the claims are read in the context of the patent specification in which they arise and in which the invention is described. Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed.Cir.1995). The prosecution history and the pri- or art may be consulted if needed to impart clarity or to avoid ambiguity in ascertaining whether the invention is novel or was previously known in the art. Id. The prior art need not be ipsissimis verbis (i.e., use identical words as those recited in the claims) to be anticipating. Structural Rubber Prods. Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed.Cir.1984).

A prior art reference also may anticipate without explicitly disclosing a feature of the claimed invention if that missing characteristic is inherently present in the single anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.Cir.1991). The Federal Circuit has explained that an inherent limitation is one that is necessarily present and not one that may be established by probabilities or possibilities. Id. That is, “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. The Federal Circuit also has observed that “[i]nhereney operates to anticipate entire inventions as well as single limitations within an invention.” Schering Corp. v. Geneva Pharms. Inc., 389 F.3d 1373, 1380 (Fed.Cir.2003). Moreover, recognition of an inherent limitation by a person of ordinary skill in the art before the critical date is not required to establish inherent anticipation. Id. at 1377.

An anticipation inquiry involves two steps. First, the court must construe the claims of the patent in suit as a matter of law. Key Pharms. v. HerCon Labs. Corp., 161 F.3d 709, 714 (Fed.Cir.1998). Second, the finder of fact must compare the construed claims against the prior art. Id. A finding of anticipation will invalidate the patent. Applied Med. Res. Corp. v. U.S. Surgical Corp., 147 F.3d 1374, 1378 (Fed.Cir.1998).

a. Anticipation by IEEE 802.11-1997 standard

Devices attempting to communicate at the same time to the same device is known as a “collision.” (D.I. 292 at 6-7) The ’944 patent attempts to address the collision problem by using a common modulated signal understood by both the older legacy, and the newer enhanced, devices. (Id.) This common signal is transmitted and addressed back to the sender; other devices hear the signal, and stop transmitting. (Id.) The common signal also contains a duration field, which indicates how long the requesting device intends to transmit data, which further helps to reduce collisions during a transmission. (3:28-37)

IV accuses Canon’s use of the RTS/ CTS collision avoidance technique of infringing the ’944 patent and specifically that Canon’s products meet the “receiver for monitoring” claim limitation by citing to a datasheet that describes the 802.11 functionality of RTS/CTS. (D.I. 292 at 7) As discussed supra, IEEE 802.11 is a standard for wireless communications that is comprised of specifications • published and continuously updated by the IEEE. (D.I. 292 at 9) The 1997 IEEE standard describes “RTS/CTS,” while the newer technique (known as “CTS-to-Self’) was added to the IEEE 802.11 standard in 2002 as another collision avoidance option. (Id. at 9-10)

Canon alleges the RTS/CTS technique is admitted prior art disclosed in the ’944 patent and that IEEE 802.11-1997 discloses each and every limitation of the asserted claims as construed by IV in its infringement contentions. (Id. at 10) Canon alleges the RTS/CTS functionality as disclosed anticipates and invalidates the asserted claims. (Id.) IV responds that it is accusing CTS-to-Self, rather than RTS/ CTS. (D.I. 310 at 15) Although IV admits that it mentioned the RTS/CTS protocol in its infringement contentions, it arguably cited such only as evidence that the products were capable of sending and receiving CTS frames. (Id. at 15-16) According to IV, the infringement contentions also contain citations to deposition testimony by Canon’s representative that concerns the CTS-to-Self capabilities of Canon’s products (D.I. 295, ex. 3 at 10-12; D.I. 312, ex. 1 at 93-95), which implies that IV accused CTS-to-Self products of infringing.

It appears both parties and their experts agree that the RTS/CTS collision avoidance mechanism disclosed in IEEE 802.11-1997 does not meet the CTS-to-Self limitation. (D.I. 311, ex. 1 at 159:13-20 (Canon’s validity expert); D.I. 311, ex. 3 at 124:25-125:6 (IV’s expert)) As the claims do not cover RTS/CTS signaling, summary judgment of anticipation by the IEEE 802.11-1997 standard is not appropriate,

b. Anticipation by Sherman

Canon asserts the claims of the ’944 patent are rendered invalid by Sherman, either alone or in combination with IEEE 802.11-1997. (0.1. 292 at 14) Sherman addresses the problem of avoiding interference on wireless networks when new protocols are introduced. The collision avoidance technique at issue in Sherman is as follows:

It should be appreciated that the use of the techniques of this invention could be for sharing with non-802.11 protocol. If the medium is to be reserved for period of time for use by non-802 11 protocol the transmitting station could send message with the duration field set so as to prevent use of the medium by 802.11 stations when another 10 protocol is active. For example as shown in FIG 7, a station practicing the enhanced 802.11 e standards could send a signal 80, such as a clear-to-send signal (CTS), to itself with duration field set to specified duration value. All stations including stations practicing the enhanced 802.11 e standards would set their network allocation vectors (NAV) accordingly. The other unknown or foreign protocol would then have preferential use of the medium during that specified duration value interval. The stations practicing the 802.11 standards within the range of the clear-to-send signal (CTS) would set their network allocation vectors so as not to use the medium, even though [sic] they might not be able to detect the other protocol.

Sherman at 12:4-22. The parties dispute whether Sherman includes the same “transmitter” required by the ’944 patent. (0.1. 292 at 14; 0.1. 310 at 23) Claims 7 and 19 of the ’944 patent require “[a] station comprising ... a transmitter for: (1) transmitting said second signal ... and (2) transmitting said first signal.” Canon argues that there is nothing in the ’944 patent specification, claims, or the court’s construction that requires a single transmitter. (D.I. 292 at 18) Canon additionally asserts that IV’s argument is based on new, overly narrow claim constructions of the term “transmitter.” {Id. at 14) TV responds that every embodiment of the ’944 patent specification depicts a single transmitter sending the first and second signals. (0.1. 310 at 24; ’944 patent, 6:6-58, 8:6-42, 9:12-49, 10:52-60) The court agrees with IV. First and foremost, the structure and plain language of claims 7 and 19 of the ’944 patent require a station with a transmitter that transmits both the first and second signals. As the claims are written, there is only one transmitter that sends both signals. Plainly, the language of the claims does not allow for a second transmitter. Second, the description contained within the specification describes a single transmitter as follows: “[transmitter 504 comprises the wireless or wireline or hybrid wireless and wireline interface circuitry that enables station 502-x to transmit data frames onto shared communications network 401.” (’944 patent at 5:37-40) Based on this description, there is only a single transmitter. Finally, every embodiment in the ’944 patent depicts a single transmitter. For example,

Figure 6 depicts a message flow diagram of the first variation of the first illustrative embodiment of the present invention. Signal stream 601-1 represents the sequence of messages transmitted by a first station on shared communications network 401, in which at least some of the messages are intended for a second station.... Prior to sending a data frame, the first station transmits, as part of its signal stream 601-1, a frame indicating clear to send, CTS frame 602. CTS frame 602 contains a duration field with a value that covers time interval 603 associated with the frame exchange of pending data transmission and corresponding acknowledgement. ... The first station then immediately transmits data frame 604 using the enhanced first modulation format. The second station, upon receiving data frame 604, responds by transmitting ACK frame 605.

(’944 patent at 6:6-58; see also Fig. 6; Id. at 8:6-42 and Fig. 8 (same, describing and depicting message flow for the “second variation of first illustrative embodiment”); 9:12-49 and Fig. 9 (same, describing and depicting message flow for the “first variation of the second illustrative embodiment”); 10:52-60 (“FIG. 10 depicts the second variation of the second illustrative [embodiment] of the present invention. Signal stream 1001-1 as transmitted by a first station comprises CTS frame 1002, and data frames 1004, 1006, 1008, and 1011.”). For the reasons described above, the court concludes that the claim language and the specification demonstrates that a single transmitter transmits both the first and second signal in the ’944 patent.

Since there is only a single “transmitter” in the ’944 patent, the issue is whether Sherman discloses a transmitter sending data to another station after sending a CTS to itself, which is unclear. Dr. Williams notes, “[n]owhere does Sherman disclose the sending of a data message to another station by a transmitter after that same transmitter sent a CTS frame to itself.” (D.I. 312, ex. 2 at ¶ 196) For example, Figure 8, a flow chart in Sherman, mentions the possibility of a CTS-to-Self signal, but “does not disclose the sending of a data frame to another station by the same transmitter that previously transmitted the CTS signal to itself.” (Id. at ¶ 197) Instead, “Figure 8 of Sherman is merely a ‘flowchart illustrating a method of updating the network allocation vector (NAV).’ ” (Id.; Sherman at 15:39-40) In summation, Dr. Williams proffers that “[n]othing in Sherman discloses the invention taught and claimed in the 944 Patent of a transmitter using a CTS-to-Self signal to quiet the network for a period and then transmitting, using the same transmitter, a data message to a different station during that period.” (D.I. 312, ex. 2 at ¶ 198) However, according to Canon, “nothing in Sherman limits the disclosure to two different transmitters and, as properly interpreted by one of ordinary skill in the art, describes transmitting both the first and second signal using a single transmitter.” (D.I. 292 at 19) In fact, as Canon asserts, Dr. Williams “admits the disclosure in Sherman includes the transmission of a data message by the same transmitter that sent the ‘CTS signal to itself.’ ” (Id.) Specifically, Dr. Williams stated that “[i]t is not disclosed that the other unknown protocol necessarily involves the transmission of a data message by the same transmitter that sent the CTS signal to itself.” (D.I. 295, ex. 10 at ¶ 194) Therefore, there is at least one question of fact regarding whether Sherman anticipates, specifically, whether Sherman discloses a transmitter sending data to another station after sending a CTS to itself.

Given the structure of the claim itself and the fact that every embodiment discloses a single transmitter (6:6-58; 8:6-42; 9: 12-49; 10:42-60), a single transmitter transmits both the second and first signal. There is a question of fact as to whether Sherman discloses sending data to another station after sending a CTS to itself. For this reason, Canon’s motion for anticipation by Sherman is denied.

2. Infringement

a. CTS-to-Self

Canon contends that summary judgment of non-infringement is appropriate because IV cannot establish that the accused products meet the CTS-to-Self requirements of the ’944 patent. (D.I. 315 at 27) Each of the asserted claims of the ’944 patent require a CTS signal be transmitted so other devices on the network stop transmitting for the specified duration.(Id.) This allows the device sending the CTS signal to transmit data using its preferred modulation scheme, and is required to avoid collisions with data transmissions of other devices. (Id.) Canon argues that IV’s expert only tested two of eighty-two accused products, and that IV merely relies on testimony and Marvell datasheets to demonstrate that the remaining products have CTS-to-Self capabilities. (Id. at 28; D.I. 316, ex. 14 at 27:11-28:12) Canon additionally argues that the evidence shows that the default mode for Canon firmware is RTS/CTS, not CTS-to-Self (D.I. 315 at 28; D.I. 312, ex. 1 at ¶ 179; D.I. 294, ex. 1 at ¶ 486), and that at least three of the accused, untested products do not use CTS-to-Self (D.I. 294, ex. 1 at ¶ 485; D.I. 316, ex. 16 at 210:19-223:18; D.I. 317, ex. 4). Moreover, Canon asserts that IV’s fact witness only testified generally about the accused products, which does not prove that the products actually use CTS-to-Self. (D.I. 316, ex. 18 at 88:19-89:4; D.I. 312, ex. 1 at ¶ 179) Further, while the Marvell datasheets suggest that the products may be configured to include CTS-to-Self functionality (D.I. 312, ex. 1 at ¶ 179), IV’s witness does not establish to which accused products the documents apply. Canon finally points out that IV withdrew several products from its infringement contentions, and that this is evidence that the testing overall was inadequate. (D.I. 315 at 36)

IV responds that Canon and Marvell’s 30(b)(6) witnesses confirmed that Marvell chipsets are capable of practicing CTS-to-Self. (D.I. 353 at 32) For example, Canon’s corporate representative, Mr. Mashimo, testified that based on Marvell datasheets and Canon source code, “Canon wireless modules with Marvell chips from March 3, 2009 or later are setting the CTS-to-self mode on.” (D.I. 353 at 32-33; D.I 354, ex. 11 at 93:10-20, ex. 19) IV additionally reproduced Canon source code confirming bit 9 is set to zero, indicating that CTS-to-self was turned on. (D.I. 353 at 34) Moreover, there is evidence to establish that the accused products indeed practice CTS-to-Self functionality as TVs expert, Dr. Williams, tested a few products for the sake of confirming the testimony. (Id. at 35) Specifically, Dr. Williams tested the VIXIA HF R30 video camera utilizing the Marvell 88W8787 chipset and the Canon MX 452 multifunction printer/scanner utilizing the Marvell 88W8786 chipset. (Id. at 35-36) Together, these products and respective chipsets represent 80 of the 96 accused Wi-Fi products. (Id.) As to the products tested by Canon’s expert, Dr. Shoemake, IV admits these products contained the chipset found in the four accused products that were later withdrawn. (Id. at 37-38) Thus the products tested by Dr. Shoemake were not the same products, nor the same chipsets, tested by Dr. Williams. (Id.)

Regarding the issue of whether adequate testing was performed, IV is entitled to rely on documentation produced during discovery, such as the Marvell da-tasheets described above. Moreover, based on the record before it, the court finds TVs utilization and testing of the documents and products appears to be representative of at least 80 of the 96 accused products. As to the remaining 16 products, IV relies on Mr. Mashimo’s testimony described above and additional datasheets that confirm CTS-to-Self function. (Id. at 36) With the exception of the products IV has dropped with respect to the ’944 patent, the court finds a genuine issue of material fact exists with respect to infringement of the ’944 patent regarding the CTS-to-Self requirement. Canon’s motion is denied in this regard.

b. Station

Canon raises- the issue of construction regarding the term “station” contained within each of the claims. (D.I. 315 at 31). As IV asserts, this defense was not properly raised during claim construction; instead, it was raised in Canon’s expert’s rebuttal report on non-infringement. (D.I. 355, ex. 5 at ¶ 17) Nonetheless, Canon contends that “station” should be given its ordinary meaning to a person of ordinary skill in the art at the time of the ’944 invention, January 2002. (D.I. 315 at 31) At that time, Canon argues, a person of ordinary skill in the art would not construe “station” as inclusive of the accused products, rather, understanding “station” to mean a wireless network communication device, such as a terminal, that includes a MAC layer, such as a computer or a network router. (Id.) Regardless of the construction, .Canon avers that IV’s expert provided no “detailed analysis” of how the accused products meet the “station” limitation, instead opining that almost anything can be a station. (Id. at 32; D.I. 316, ex. 14 at 49:8-14, 50:10-18, 54:5-7, 63:19-64:2)

TV’s expert, Dr. Williams, responds that the 1997 IEEE standard defines “station” as “[a]ny device that contains an IEEE 802.11 conformant medium access control (MAC) and physical layer (PHY) interface to the wireless medium (WM)” (D.I. 353 at 38; D.I. 355, ex. 5 at ¶ 17) He continues with a conclusory statement that “[a]s such, the accused instrumentalities are stations as that term is used in the [’]944 Patent as understood by one of ordinary skill in the art.” (Id.) In reply, Canon argues TV’s interpretation is “overly broad” and maintains that the term should be construed by the court. (D.I. 381 at 16). The parties additionally dispute whether the products can be considered after-arising technology and whether “station mode” falls within the scope of the term. (D.I. 353 at 39; D.I. 381 at 17)

Lacking further explanation as to a proper construction or how the accused products meet either parties’ “station” definition, the court finds neither party has met their burden of persuasion. On the record before it, the court is left without sufficient information to construe the term or determine if the accused products meet the “station” limitation. Schumer v. Laboratory Computer Systems, Inc., 308 F.3d 1304, 1315 (Fed.Cir.2002) (“It is not our task, nor is it the task of the district court, to attempt to interpret confusing or general testimony to determine whether a case of [infringement] has been made out, particularly at the summary judgment stage.). Further, because resolution of the claim construction does not appear to be disposi-tive, the court will only construe the term if such construction becomes necessary before the case reaches the jury. The motion for summary judgment is denied.

c. Doctrine of equivalents

Canon additionally alleges that IV is estopped from asserting the doctrine of equivalents because the ’944 patent narrowed claims and surrendered claim scope. (D.I. 315 at 33-36) Specifically, the original claims of the ’944 patent were amended to include a “station” and a “second signal” that indicated “clear to send” and was “addressed to the sender.” (See, e.g., D.I. 316, ex. 20. at CAN0Í00088, CAN010011621) Additionally, Canon alleges that, even if prosecution history estop-pel does not apply, IV’s expert provided no analysis for any of the limitations of the ’944 patent beyond a “conclusory” sentence. (D.I. 312, ex. 1 at ¶ 178) IV asserts that the doctrine of equivalents is not properly invoked because there is literal infringement. (D.I. 353 at 40) Rather than respond to Canon’s arguments regarding narrowed claims and surrendered claim scope, IV reasserts its infringement arguments regarding the station and CTS-to-Self limitations in the ’944 patent. (Id.) Because IV fails to respond substantively to Canon’s assertions, IV is precluded from raising infringement by equivalence at'trial.

V. THE NON-WIFI PATENTS

A. The ’728 Patent

The ’728 patent describes “a laser driver circuit” in a laser printer. (1:5-6) The circuit directs a “main current” either through the laser (turning the laser on), or through a bypass (turning the laser off). (2:37-42) “The two current paths rejoin at a current sensing device, such as a current-sensing resistor. A voltage drop across the current sensing resistor serves as a current sense signal indicating the magnitude of the total laser current which is the sum of the main current plus the bias current.” (2:60-65) “[B]y operation of the bypass switch in synchronism with the pulses of an input digital data signal, the laser emits a train of light pulses identical in format to the train of electrical pulses of the input digital signal.” (2:42-46)

Independent claim 17 reads:

A method of applying current to a laser comprising steps of:

providing a current bypass around the laser;

selectively switching a main current from a source of the main current alternately between said laser and said bypass to provide pulses of the main current of said laser;

monitoring a flow of current in said laser and in said bypass to provide a measure of current; and

controlling a magnitude of said main current in response to said current measure.

(18:38-48)

1. Anticipation

The parties filed competing motions as ■ to whether Igaki anticipates claim 17. Canon’s expert, Dr. Carley, explains that the limitation “monitoring a flow of current in said laser and in said bypass to provide a measure of current” is satisfied by Igaki’s description of “detecting the flow of current in the laser diode 1 and in the bypass ([field effects transistor (“FET”) ] 10) using resistor 2 to generate a voltage V that serves as a measure of the current flowing through resistor 2.” (D.I. 301, ex A 131) More specifically, Dr. Carley opines that in Igaki, “[t]he voltage V at the top of resistor 2, as well as the amplified voltage at the output of amplifier 3, serves as a measure of the current flowing through resistor 2, as the bottom of resistor 2 is connected to ground.” (Id.) In response, TV’s expert, Dr. Horenstein, disagrees that the limita- • tion is met opining that

the voltage V serves as a node in the feedback loop of comparator 3, and it is a replica of the output of D/A converter 5 (divided by the gain of amplifier 3). This resistor neither detects nor monitors any current flow.... In the Igaki circuit, the value of resistor 2 sets the current flowing through the laser. Changing either the “Setting Data Value” input or the negative bus voltage (represented, e.g., by the downward arrow from resistor 2 in the Figure) will alter the current.

(D.I. 327 at ex. 2A, ¶ 64) Dr. Horenstein testified:

Q. And since resistor 2 is connected to ground, the voltage at the node labeled V is the same as the voltage drop across that resistor, right? That’s straightforward.

A. Well, I’m not sure that [Igaki] ever says that the lower end of the resistor is connected] to ground. It’s just an arrow.

(D.I. 325, ex. 1 at 208:4-10) The court concludes, based on the experts’ opinions, that there exist material questions of fact (at least) as to whether resistor 2 is connected to ground and whether it detects current, i.e., whether Igaki discloses the “monitoring” limitation.

With regard to the limitation “selectively switching a main current from a source of the main current alternately between said laser and said bypass to provide pulses of the main current of said laser,” Dr. Car-ley explains that “FET 10 acts as a switch that directs the switching current either through the laser or through FET 10,” making the “FET current path ... the ‘bypass.’ ... The switching current is switched between the laser and the bypass based on the light emission control signal, thereby providing pulses of the switching current to the laser.” (D.I. 301, ex. A at ¶¶ 127-128) Canon argues that “Igaki clearly describes that the laser 1 emits light (i.e., is ‘on’) when the current I is flowing through it,” relying on Igaki’s disclosure that “an FET 10, as a switch for controlling the laser diode 1 so as to emit light or stop emitting light, depending on a light emission control signal, is connected in parallel with the laser diode 1.” (D.I. 299 at 8; D.I. 302, ex. 6 at CAN0265074)

IV concedes for this motion practice that “Igaki discloses a main current flowing from transistor 7, which is a current that is alternately switched by [FET] 10 (in response to a light emission control signal) between laser 1 (when FET 10 is on) and a bypass (when FET 10 is off).” (D.I. 321 at 3) However, IV disagrees that Igaki discloses “pulsing” of the laser, required to satisfy the limitation “provide pulses of the main current of said laser.” (Id. at 4) Dr. Horenstein opines that “while it is true that a current will be switched between the laser path and the bypass path, there is no teaching that the switching will cause the laser to pulse, because there is no teaching that the switching causes the current flowing through the laser to exceed the lasing threshold.” (D.I. 327, ex. 2A at 1 ¶ 60) The experts’ disagreement as to whether Igaki teaches “pulsing” is a question of material fact to be decided by a jury. The court denies the competing motions as to anticipation of the ’728 patent.

2. Prior Art

The 35 U.S.C. § 102 printed publication bar states: “A person shall be entitled to a patent unless — (b) the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States .... ” 35 U.S.C. § 102(b). “The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone.” In re Bayer, 568 F.2d 1357, 1361 (C.C.P.A.1978).

The linchpin for determining whether a reference constitutes a “printed publication” under 35 U.S.C. § 102(b) is “public accessibility.” In re Hall, 781 F.2d 897, 899 (Fed.Cir.1986) (citing In re Bayer, 568 F.2d at 1359; In re Wyer, 655 F.2d 221, 224 (C.C.P.A.1981)). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b).” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed.Cir.2008) (quoting In re Hall, 781 F.2d at 898-99 (Fed.Cir.1986)).

A given reference is “publicly accessible” upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.

Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.Cir.2006)(quoting In re Wyer, 655 F.2d at 226); see also Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568 (Fed.Cir.1988) (“Accessibility goes to the issue of whether interested members of the public could obtain the information if they wanted to.”). “Whether an anticipatory document qualifies as a ‘printed publication’ under § 102 is a legal conclusion based on underlying factual determinations.” SRI Int’l, 511 F.3d at 1192 (citation omitted); see In re Klopfenstein, 380 F.3d 1345, 1347 (Fed.Cir.2004) (“Where no facts are in dispute, the question of whether a reference represents a ‘printed publication’ is a question of law.”).

Dr. Thompson (the sole inventor of the ’728 patent) defended his thesis (“the Thompson thesis”) on September 7, 1992, and the thesis was