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NATIONAL RESEARCH & DEV. CORP. v. VARIAN ASSOCS.

May 4, 1995

THE NATIONAL RESEARCH AND DEVELOPMENT CORPORATION, et al., Plaintiffs,
v.
VARIAN ASSOCIATES, INC., Defendant.



The opinion of the court was delivered by: HAROLD A. ACKERMAN

 Ackerman, D.J.

 In 1989, plaintiff, the National Research and Development Corporation ("NRDC" or "plaintiff"), *fn1" brought this action for infringement of U.S. Patent No. 3,999,188 ("'118 patent" or "Hoult patent") against Varian Associates, Inc. ("Varian" or "defendant").

 Claim 2 is dependent on Claim 1, and specifies that the transmitter means includes means for causing alternate pulses to be in phase opposition (i.e., off by 180 [degrees]).

 Claim 3 and claim 4 are method claims, which describe steps to be carried out when using the apparatus described in the first two claims. Claim 3 is the counterpart to Claim 1 and Claim 4 is the counterpart to Claim 2. See generally National Research Development Corporation v. Varian Associates, 822 F. Supp. 1121, 1121-24 (D.N.J. 1993) (discussing NMR spectrometry and the Hoult patent), aff'd in part, vacated in part, 17 F.3d 1444 (Fed. Cir. 1994) (Table) (text in Westlaw at 1994 WL 18963).

 The primary defense asserted by Varian in this suit is their contention that, for a number of reasons, NRDC's patent is invalid. All issues other than the validity and enforceability of the patent and Varian's alleged infringement were bifurcated and stayed for a later separate trial.

 Between February 9, and 23, 1993, this court held a bench trial. After trial, this court held that all four claims of the Hoult patent were not anticipated under 35 U.S.C. § 102(a) but were nevertheless invalid under the public use bar of 35 U.S.C. § 102(b). See NRDC, 822 F. Supp. at 1127-32. Because the court found all four claims of the patent invalid under § 102(b), none of Varian's other defenses were addressed.

 Plaintiff appealed this decision. The Federal Circuit upheld the determination that claims 1 and 3 were invalid under the public use bar of 35 U.S.C. § 102(b). See NRDC, 1994 WL 18963 at *3-*4. However, the Federal Circuit stated that it was undisputed that only the subject matter of claims 1 and 3 (and not claims 2 and 4) were incorporated into the apparatus that made up the prior public use--a spectrometer used by scientists at the Monsanto Company. Id. at *4. The Federal Circuit noted "that public use activity invalidating some claims of a patent under section 102(b) creates prior art that may support an obviousness-type invalidation of other claims within the same patent under §§ 102(b), 103." Id. (citations omitted). Because none of the requisite factual findings which underlie an ultimate conclusion of obviousness were made by this court at trial, the Federal Circuit vacated this court's holding with respect claims 2 and 4 and remanded the matter for further proceedings. See id. at *4-*5.

 On remand, Varian argues, among other things, that claims 2 and 4 of the Hoult patent are invalid for three reasons: 1) due to obviousness under 35 U.S.C. § 103; 2) due to inequitable conduct before the Patent Office by NRDC; and 3) for failure to meet certain requirements of 35 U.S.C. § 112. NRDC denies that claims 2 and 4 are invalid, and asserts that Varian infringed claims 2 and 4.

 On March 31, 1995, this court heard oral argument concerning these issues. The following constitutes my findings of fact and conclusions of law. As is detailed below, I will deny the remainder of NRDC's claims against Varian because claims 2 and 4 of its patent are invalid pursuant to 35 U.S.C. § 103.

 I. Findings of Fact.2

 A. The Background.

 The patent in this case involves the field of nuclear magnetic resonance spectroscopy ("NMR"). Spectroscopy is the study and analysis of materials to determine their components and molecular structure. NMR is a particular form of spectroscopy that works by observing a material's reaction to imposed radiation. NMR depends on the properties of nuclear magnetism and operates on relatively low radio frequencies.

 An NMR apparatus normally consists of a large magnet, a material to be analyzed, a radio-frequency pulse transmitter to excite a sample, and a radio-frequency receiver and detector, which will observe the response. In addition, a device such as a computer memory is attached to the detector to store the recorded data.

 Modern spectroscopy uses a pulsed NMR method. Pursuant to this method, radiation is applied in short pulses rather than continuously, which was the prior method. As the nuclei in the sample being analyzed react, a transient, temporary radio-frequency response will follow. The transient is received by a probe. The probe is connected to a part of the receiver which is called the detector. The detector then produces a signal whose strength varies in precisely the same manner as the strength of the detected transient. Generally, the detected transient signals are printed or displayed as a spectrum of marks at frequencies characteristic of the material being analyzed.

 In the mid-1960's, Varian scientist Weston A. Anderson discovered a technology called Fourier transform NMR. This is a method of pulsed NMR in which the transmitter pulses excite the specimen by simultaneously producing a whole band of frequencies, covering the entire spectrum of possible frequencies. As the specimen responds to the various frequencies, a mathematical technique called Fourier transformation is used to translate the responses. The Fourier transformation method greatly increased the capabilities of NMR technology and the sensitivities of NMR apparatus.

 The patent at issue in this case involves a technology called quadrature phase detection ("QPD").

 
Initially, this means that the apparatus uses phase-sensitive detectors; that is, the transient signals received by the probe are combined with a reference signal in the receiver. In QPD, there are two phase-sensitive detectors, and the transient radio-frequency response splits into two parts. Each signal enters a "phase" and the resulting two signals are 90 degrees out of phase with each other (that is, they are in "relative phase quadrature"). The result, then, is two audio-frequency signals that come out correspondingly different, by an order of 90 degrees. The phase detectors differ only in the fact that their reference analyses are in relative phase quadrature with each other. QPD also expanded the capabilities of NMR machines.

 NRDC, 822 F. Supp. at 1122.

 In order to maximize results in NMR experiments, two further procedures need to be done.

 The first is termed "time averaging" and involves strengthening the signal. When the transient signal is first received, it is difficult to detect (i.e., is very weak) because there is interference from random sources of noise and static. However, if the experiment is done again and again, and if each time the signal is the same, the signal will continue to grow and become more audible. When an experiment is done ten times, the signal grows by a factor of ten, but the unwanted random noise grows only by a factor of three. Thus, when the experiment is repeated over and over again, and the results are added in the data storage, the signal to random noise ratio improves, and the signal becomes much easier to detect. Typically, an experiment is repeated hundreds, thousands, or even a million times.

 The second procedure performed on the detected signals is a mathematical manipulation called "data routing". Data routing manipulates the resulting transient signals.

 Despite the advances made by QPD, the technology originally had other problems. These problems included, as Dr. Hoult refers to them, "ghosts" and "systematic noise".

 First, the problem of "ghosts".

 
In order to be successful, a quadrature phase detector had to be perfectly balanced. That is, the machine had to be constructed properly so that the reference signals would be precisely 90 degrees out of phase. Slight deviations from these specifications could create problems in detection. If these problems were present -- if, for example, the reference signals are not precisely 90 degrees out of phase -- the removal of the unwanted frequencies is no longer perfect. Rather, each observed frequency is accompanied by a "ghost" frequency. The observing scientist cannot tell which frequency is real and which is a ghost. Sophisticated scientists, generally not involved in routine commercial NMR work, were able to solve the ghost problem by various mathematical manipulations.

 NRDC, 822 F. Supp. at 1123.

 The second problem is that of "systematic noise". Systematic noise results from the presence near the spectrometer of radio signals from sources other than the spectrometer. For example, if there is a radio transmitter near the laboratory transmitting a steady signal that happens to lie within the band of interest in the spectrometer and the laboratory is not adequately shielded to keep out the signal, then the outside radio signal will leak through the spectrometer and show up on the final spectrum.

 B. The Hoult Patent3

 As stated previously, the Hoult patent addresses these two problems. Claims 1 and 3 of the Hoult patent, which have been held invalid, deal with the problem of ghosts. Claims 2 and 4, which are dependent on claims 1 and 3 and are now at issue, deal with the problem of systematic noise.

 In his patent specification, Dr. Hoult first described NMR spectrometers with single-phase detectors and their components, and noted problems with these machines as they then existed. Dr. Hoult then described the benefits of quadrature phase detection NMR relative to single-phase NMR. Thereafter, Dr. Hoult noted his belief that the problems with QPD which caused the appearance of a ghost frequency inhibited scientists from taking advantage of the benefits of QPD in NMR spectrometers. As he put it:

 
The carrying out of quadrature N.M.R. experiments of this kind has previously involved ensuring that the two audio-frequency channels of a spectrometer are matched to a very high degree of accuracy both in phase and in gain and that the two phase sensitive detections are accurately in quadrature. If these conditions are not met, the spectra obtained become extremely distorted and it is this problem which has hitherto prevented the wide use of quadrature N.M.R. despite its considerable advantages over single-phase N.M.R.

 Dr. Hoult then specified that his patent was intended to be a solution to this problem. In addition, Hoult stated that his patent was intended to be a solution to the problem of systematic noise.

 He wrote in summary:

 
Thus by shifting the phase of the transmitter 90 [degrees] between pulses and performing simple addition and subtraction on the resultant detected signals it has proved possible to eliminate difficulties caused by the channels being phased incorrectly and having different gains.
 
A further advantage of shifting the transmitter phase occurs when the transmitter signal is shifted through 180 [degrees]. This inverts the output signals and by subtracting the inverted signals from the original signal the systematic noise can be eliminated whilst the signal is increased.
 
Thus by utilizing the transmitter circuit of FIG. 1 to change the transmitter phase cyclically by 0 [degrees], 90 [degrees], 180 [degrees], and 270 [degrees] etc. on successive pulses, and by performing the appropriate additions and subtractions in a computer, quadrature N.M.R. becomes a very attractive proposition without the necessity for exceedingly accurate matching in the audio frequency channels and exceedingly accurate quadrature detection.

 The Hoult patent then discloses four claims. Claim 1, which has been held invalid, describes a nuclear magnetic resonance apparatus comprising (a) a pulse modulated radio-frequency transmitter means for exciting a specimen by means of a train of radio-frequency pulses, successive ones of which are in relative phase quadrature, and (b) a receiver means for producing two audio frequency signals in response to the detection of transient radio-frequency resonance signals from the specimen so excited. The receiver means is also described as comprising quadrature phase detectors having as inputs (1) signals derived from and having the same transient form as the resonance signals, and (2) resonance signals which are in relative phase quadrature.

 Claim 2, which is at issue, is dependent on Claim 1, and specifies that the transmitter means includes means for causing alternate pulses to be in phase opposition.

 Claims 3 (which is invalid) and 4 (which is at issue) are method claims, which describe steps to be carried out when using the apparatus described in the first two claims. Claim 3 is the counterpart of claim 1 and claim 4 is the counterpart of claim 2.

 In the previous opinion in this case, I found, referring to claims 1 and 3, that

 
the Hoult patent disclosed a specific combination of steps that, when used with practices common in the art, would eliminate the ghost problem. It worked in the following way: By shifting the phase of the transmitter, successive errors that occur in the output cancel each other out. The phase-shifting is accompanied by data routing of the detected signals, that is, directing the data to be stored in ...

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