United States District Court, D. New Jersey
April 1, 2005.
MOSAID TECHNOLOGIES INCORPORATED, Plaintiff,
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG SEMICONDUCTOR, INC., and SAMSUNG AUSTIN SEMICONDUCTOR, L.P., Defendants. INFINEON TECHNOLOGIES NORTH AMERICA CORP., Plaintiff, v. MOSAID TECHNOLOGIES INCORPORATED, Defendant. MOSAID TECHNOLOGIES INCORPORATED, Counterclaimant, v. INFINEON TECHNOLOGIES NORTH AMERICA CORP., INFINEON TECHNOLOGIES AG, INFINEON TECHNOLOGIES HOLDING NORTH AMERICA CORP., and INFINEON TECHNOLOGIES RICHMOND LLP, Counterdefendants.
The opinion of the court was delivered by: WILLIAM J. MARTINI, District Judge
This matter comes before the Court on the parties' motions for
summary judgment. MOSAID Technologies Inc. ("MOSAID") seeks
summary judgment of infringement as to claim 15 of the Lines '643
patent and claim 1 of the Foss '654 patent, and on several of
Infineon Technologies North America Corp. et al.'s
("Infineon's") invalidity and unenforceability defenses,
including invalidity under §§ 102(b) and (g), prosecution laches,
and inequitable conduct. Infineon seeks summary judgment of
noninfringement as to all of the asserted Lines and Foss claims,
and on its claim that MOSAID's potential damages are limited
under the patent marking statute. Also before the Court is
MOSAID's motion to strike the Rebuttal Expert Report of Joseph
McAlexander Regarding Non-Infringement of MOSAID Patents or, in
the alternative, for leave to supplement the expert report of
David Taylor. For the following reasons, the parties' motions for
summary judgment are GRANTED-IN-PART and DENIED-IN-PART, and
MOSAID's motion to strike is DENIED in its entirety. BACKGROUND
This is a patent infringement action. Currently, MOSAID asserts
that Infineon infringes seven patents. Those patents can be
broken down into two families named after the lead inventors: the
Lines patent family and the Foss patent family. The asserted
Lines patents are U.S. Patent Nos. 5,822,253 (the "'253 patent"),
5,751,643 (the "'643 patent"), 6,278,640 (the "'640 patent"), and
6,603,703 (the "'703 patent"). The asserted Foss patents are U.S.
Patent Nos. 5,828,620 (the "'620 patent"), 6,055,201 (the "'201
patent"), and 6,580,654 (the "'654 patent"). Both families claim
particular circuits found in a DRAM chip; the Lines patents claim
a word line driver circuit and the Foss patents claim a voltage
This litigation began when Infineon filed a declaratory
judgment patent action against MOSAID in the U.S. District Court
for the Northern District of California. Aware that MOSAID had
already filed a patent infringement action against Samsung
Electronics Co. et al. ("Samsung") in this district, Infineon
sought to consolidate the two cases as a multidistrict litigation
in the California court. The Judicial Panel on Multidistrict
Litigation agreed that it should be consolidated, but found that
the District of New Jersey was the more appropriate court to
conduct all pretrial proceedings. Accordingly, the Infineon
action was transferred to this Court where it was consolidated
with the Samsung action.*fn2 The only pretrial proceeding that remains to be completed is
resolution of the pending summary judgment motions and MOSAID's
motion to strike. This Court has conducted Markman proceedings
and issued a Markman Opinion. The parties have completed fact
and expert discovery. Once these motions are resolved, it will
then be appropriate for the Infineon action to be transferred
back to the Northern District of California.
SUMMARY JUDGMENT STANDARD
Patent cases are amenable to summary judgment. Knoll Pharm.
Co. v. Teva Pharm. USA, Inc., 367 F.3d 1381, 1384 (Fed. Cir.
2004). Summary judgment eliminates unfounded claims without
resorting to a costly and lengthy trial. Celotex Corp. v.
Catrett, 477 U.S. 317, 327 (1986). However, a court should grant
summary judgment only "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 burden of showing
that no genuine issue of material fact exists rests initially on
the moving party. Celotex, 477 U.S. at 323. A litigant may
discharge this burden by exposing "the absence of evidence to
support the nonmoving party's case." Id. at 325. In evaluating
a summary judgment motion, a court must view all evidence in the
light most favorable to the nonmoving party. Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986);
Goodman v. Mead Johnson & Co., 534 F.2d 566, 573 (3d Cir.
Once the moving party has made a properly supported motion for
summary judgment, the burden shifts to the nonmoving party to
"set forth specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e); Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 247-48 (1986). The substantive law
determines which facts are material. Anderson, 477 U.S. at 248.
"Only disputes over facts that might affect the outcome of the
suit under the governing law will properly preclude the entry of
summary judgment." Id. No issue for trial exists unless the
nonmoving party can demonstrate sufficient evidence favoring it
such that a reasonable jury could return a verdict in that
party's favor. Id. at 249; Knoll Pharm. Co.,
367 F.3d at 1384.
MOSAID seeks summary judgment that Infineon's 256 RLDRAM Blaze
("Blaze") products infringe claim 15 of the Lines '643 patent and
that Infineon's 256M Hatteras ("Hatteras") products infringe
claim 1 of the Foss '654 patent. Infineon seeks summary judgment
that the accused products do not infringe any of the asserted
Lines claims that contain a "latching" limitation, any of the
asserted Foss patents because of the "clock source" disclaimer,
or claims 1 and 10 of the Foss '201 patent because of the
"switching means" limitation. Infineon also seeks summary
judgment that MOSAID cannot demonstrate infringement under the
doctrine of equivalents for any asserted claim of the patents in
suit. Because of the substantial overlap among these arguments,
the Court will address them together by issue.
Infringement is a two-step process: the Court must construe the
disputed terms contained in the asserted claims, and then compare
the asserted claims as construed to the accused products or
processes. NTP, Inc. v. Research in Motion, Ltd.,
392 F.3d 1336, 1364 (Fed. Cir. 2004). Because the Court has already completed the first step by
construing the disputed claim terms in its Markman Opinion and
Order, the Court now turns to the second step.
To prove infringement, the patentee must show that the accused
products or processes contain each and every limitation of the
asserted claims, either literally or under the doctrine of
equivalents. Frank's Casing Crew & Rental Tools, Inc. v.
Weatherfood Int'l, Inc., 389 F.3d 1370, 1378 (Fed. Cir. 2004). A
product or process literally contains a limitation when it
contains the limitation exactly. Litton Sys., Inc. v. Honeywell,
Inc., 140 F.3d 1449, 1454 (Fed. Cir. 1998). If the limitation is
not met exactly, it may still be infringed under the doctrine of
equivalents. A product or process infringes a limitation under
the doctrine of equivalents when some element of the product or
process is not substantially different from the limitation (the
"insubstantial differences" test),*fn3 or performs
substantially the same function in substantially the same way to
obtain substantially the same result as that limitation (the
"function-way-result" test). Lear Siegler, Inc. v. Sealy
Mattress Co. of Mich., Inc., 873 F.2d 1422, 1425 (Fed. Cir.
A. Claim 15 of the Lines '643 Patent
Claim 15 of the Lines '643 patent states:
A method of selecting a word line in a dynamic random
access memory comprising:
decoding address signals to drive first and second
level shifted control signals to logic levels
including a voltage level greater than the voltage to
be stored in a memory cell and latching the
levelshifted control signals, each control signal in
a respective latch state being pulled down to a low
level through an N-channel transistor as the other control signal is latched
high through a Pchannel pull-up transistor, the
control signal being set and reset by pull-down
transistors gated only by Vdd level signals; and
from one of the latched, level-shifted control
signals applying a controlled high voltage greater
than the stored voltage to a selected word line.
'643 patent, claim 15 (emphasis added). Infineon argues that the
accused products do not infringe claim 15 because they do not
meet the two italicized limitations. MOSAID disagrees, arguing
that both limitations are satisfied by Infineon's accused
1. Direct Versus Indirect Infringement
As an initial matter, it is important to address Infineon's
argument that MOSAID's motion for summary judgment of
infringement should be denied because MOSAID has failed to
proffer evidence that Infineon actually practices the method of
claim 15. (Infineon's Mem. In Opp'n to MOSAID's Motions for Summ.
J. Against Infineon ("Infineon's Opp'n Br.") at 2-3). MOSAID
essentially admits as much, but responds by arguing that Infineon
has induced others to infringe and has contributed to their
infringement by selling in the United States DRAM products that
perform the claimed method. See 35 U.S.C. §§ 271(b) (induced
infringement) and (c) (contributory infringement). Since this
lawsuit appears to be based on Infineon's sales of allegedly
infringing DRAM chips in the United States, and MOSAID has not
shown that Infineon practices the claimed method in the United
States, the Court finds that Infineon does not directly infringe
claim 15. Infineon, however, remains potentially liable for
indirectly infringing claim 15. 2. The "Latching" Limitation
The asserted claims of the Lines '253, '643 and '640 patents
contain a "latching" limitation.*fn4 Claim 15 of the '643
patent is a representative claim. As set forth above, it requires
that the level-shifted control signals be "latched." Infineon
argues that none of the accused products "latch" the
level-shifted control signals under the Court's construction of
that term in the Markman Opinion and Order. MOSAID disagrees.
MOSAID argues that Infineon misunderstands the construction of
the "latching" limitation and that, if properly applied to the
accused products, they infringe literally or under the doctrine
In determining whether Infineon's accused products "latch" the
control signals, the issue boils down to what it means to "latch"
the control signals. Although the Court believes that this was
clearly delineated in its Markman Opinion and Order, both
parties argue that the Court's construction of "latch" supports
their infringement argument.
The Court defined "to . . . latch" as meaning "to indefinitely
retain at least one data state with a feedback loop in the
absence of any new control signal to change the state."
(Markman Order at ¶ 22). MOSAID argues that this construction
does not mean that the output state should be retained in the
absence of inputs or "without input signals." Instead, it argues
that the Court's construction "only requires maintaining at least
one data state until a new signal changes the state." (MOSAID's
Br. in Opp'n to Infineon's Motion for Summ. J. ("MOSAID's Opp'n
Br.") at 8). As a result, it argues that cross-coupled PMOS
transistors, such as p5 and p6 in Figure 1 of the '643 patent,
are capable of "latching" control signals as defined by the
Court. MOSAID's take on the Court's claim construction is incorrect.
Essentially, MOSAID contorts the construction of "latching" in an
attempt to reclaim a construction that was previously rejected by
this Court. In doing so, it ignores the clear language of the
Court's Markman Opinion, which contradicts MOSAID's current
Previously, MOSAID contended that a "latching level shifter"
holds the output signals while the input signals are present.
(Markman Op. at 43-44). In an effort to persuade the Court that
its proposed definition was correct, MOSAID argued that the
dictionary definition of "latch," which referred to a symmetrical
circuit, was inapplicable to this case because Figure 1 does not
use a symmetrical latching level shifter; instead, it uses an
asymmetrical latching level shifter. In other words, MOSAID
acknowledged that Figure 1 was not capable of "two-way latching"
under the ordinary meaning of the word "latch." MOSAID argued
that Figure 1 shows an asymmetrical circuit capable of only
"one-way latching" because it can only hold one output state in
the absence of inputs. MOSAID contended that in order for Figure
1 to retain both output states, it would need another pull-down
transistor, like transistor 12, whose gate is connected to node
Indeed, MOSAID's own expert, Richard Greene, stated the
following when explaining what a DRAM designer in 1990 would have
understood the term "level shifter" to mean:
Generally, a "latch" is understood to refer to a
circuit that retains its output state in the absence
of inputs. In contrast, the level shifter 6 shown in
Figure 1 does not retain its output state in the
absence of inputs. Rather, the level shifter 6 can
not retain state because it only has one pull-down
transistor 12 connected to the gate of one of the
pull-up transistors 7B. In order to retain a logic
zero, another pull-down transistor connected to the
gate of transistor 7A would be required. (Expert Report of Richard Greene in Support of MOSAID's Claim
Construction Br. ("Greene Markman Expert Report") at ¶ 18,
In the Markman Opinion, the Court agreed with MOSAID's
understanding of Figure 1. It determined that transistor 12 was
an essential element needed to "latch" an output state and that
the absence of a second pull-down transistor prevented Figure 1
from performing "two-way latching." The Court found that the
latching level shifter of Figure 1 of the Lines patents can only
retain one output state in the absence of input signals.
(Markman Op. at 44). Relying in part on MOSAID's own expert's
definition of "latch," the Court concluded that "latching" means
"retaining an output state in the absence of inputs," i.e.,
retaining an output state without any input signals. (Markman
Op. at 44 n. 20). This construction reflected the Court's view of
how Figure 1 of the Lines patents works.
In direct contrast to that construction, MOSAID's current
infringement argument is predicated on the assertion that
transistor 12 is not needed for latching. Indeed, MOSAID goes so
far as to say that transistor 12 is "irrelevant" to
latching,*fn5 and is but a "distraction, not a
defense."*fn6 Instead, MOSAID argues that Infineon's Blaze
"latches" the control signals by maintaining the inputs to the
level shifter. (See, e.g., MOSAID's Br. Against Infineon at 8;
Expert Report of David L. Taylor Regarding Infringement of the
Accused Infineon Products ("Taylor Infr. Report") at ¶ 127). But
that argument cannot be correct. If MOSAID's infringement
argument was adopted, it would mean that Figure 1 performs
"two-way latching" rather than only "one-way latching." In other words, MOSAID
artfully twists the Court's claim construction until it achieves
the same result it attempted to achieve under its proposed
Markman construction.*fn7 Having rejected that proposition
once, the Court readily and easily rejects the repackaged
"latching" argument a second time. Consequently, because
"latching" is not dependent on input signals being maintained,
MOSAID's motion for summary judgment of infringement as to claim
15 of the '643 patent is denied.
Given the correct construction of the relevant claim terms
that "latching" must be performed in the absence of input
signals*fn8 it is apparent that the only way to
indefinitely retain a data state is to use a pull-down transistor
such as transistor 12. To latch each control signal, the latching
level shifter requires two pull-down transistors or other
structure that performs that function. Here, there is no dispute
that the level shifters in Infineon's accused products cannot
indefinitely retain data states in the absence of inputs; they do
not contain the requisite pull-down transistors. Thus, the
accused products do not literally meet the "latching" limitation.
Additionally, because MOSAID has failed to identify any other
structure that can "latch" the control signals as defined by the Court, the accused products do
not infringe the "latching" limitation under the doctrine of
equivalents. Accordingly, the accused products do not infringe
claims 31-34 of the '253 patent, claims 1-3, 8-13, 15-17, and
22-28 of the '643 patent, and claim 1 of the '640 patent, either
literally or under the doctrine of equivalents.
3. The "Control Signals Applying" Limitation
MOSAID argues that Infineon's Blaze infringes the "control
signals applying" limitation of claim 15 of the Lines '643 patent
because Blaze's level shifter generates control signals that
select a block of word lines, one of which is eventually selected
by a primary and secondary decoder. Infineon argues that Blaze
does not infringe this limitation because the signals identified
by MOSAID are not control signals, i.e., they do not control
the application of a voltage to a single word line or group of
"Control signals" have been defined as meaning "signals used to
control the application of a voltage to a single word line or a
group of word lines." (Markman Order at ¶ 18). In the context
of the claim language set forth above, the control signal applies
Vpp to a selected word line. See '643 patent, claim 15.
Here, MOSAID admits that Infineon's control signal only applies
Vpp to a block of word lines, not a selected word line or
even a group of word lines. (See MOSAID's Br. Against Infineon
at 11-12). Once that block of word lines is selected, a primary
and secondary decoder must then go on to select the appropriate
word line or group of word lines. Since the signals identified by
MOSAID do not apply Vpp to a selected word line, but are
further upstream from the actual selection of the word line,
those signals cannot be "control signals" as claimed by the patent. Therefore, Infineon's Blaze
does not literally infringe the "control signals applying"
B. Claim 1 of the Foss '654 patent
Claim 1 of the Foss '654 patent states:
A dynamic random access memory (DRAM) boosted voltage
word line supply comprising:
DC voltage supply;
a boosting capacitor having first and second
a switching circuit including a first switch between
the voltage supply and the first terminal of the
boosting capacitor and a  second switch between
the first terminal of the boosting capacitor and a
capacitive load, the  first switch and the
second switch being driven by clock signals, the 
switching circuit alternately connecting the first
terminal of the boosting capacitor to a first voltage
level and to the capacitive load while alternating
the level of voltage applied to the second terminal
of the boosting capacitor to pump the voltage on the
capacitive load to a boosted voltage level greater
than and of the same polarity as the DC voltage
supply, the second switch being enabled to
substantially eliminate a threshold voltage reduction
of boosted voltage; and
a word line decoder which selectively couples the
boosted voltage level to a selected DRAM word line.
'654 patent, claim 1 (emphasis added).*fn9
that Infineon's Hatteras infringes this claim. Infineon
disagrees. Infineon argues that the accused products, including
Hatteras, do not infringe any of the Foss patents because they
fall within the clock sources disclaimer and therefore cannot meet limitation  designated above. Further,
Infineon argues that Hatteras does not meet limitations  and
 listed above.
1. The "Switching Circuit . . . Alternating the Level"
Limitation and the Clock Sources Disclaimer
Infineon moves for summary judgment that its accused products
do not infringe any of the asserted claims of the Foss '620, '201
and '654 patents. Each of these claims contains a "switching
circuit . . . alternating the level of voltage applied to the
second terminal of the boosting capacitor" limitation.*fn10
Infineon argues that its accused products do not infringe that
limitation because they use a "clock source" to charge the second
terminal of the boosting capacitor, and thus falls within the
clock sources disclaimer. MOSAID responds by arguing that the
accused products use a local "clock signal," not a "clock
source," to charge the second terminal, which is fundamentally
different and meets this limitation. In order to resolve this
dispute, it is necessary for the Court to explicate what it means
to use a "clock source" to charge a boosting capacitor.
The Court construed "switching circuit . . . alternating the
level" to mean "alternately connecting the second terminal of the
boosting capacitor . . . without the use of clock sources to
charge the boosting capacitor." (Markman Order at ¶ 26,
emphasis added). This clock sources disclaimer applies to all of
the Foss patents. (Markman Op. at 52-55). Figure 1 of the Foss patents is a drawing of a prior art circuit that used clock
sources to charge the boosting capacitor. (See, e.g., Foss
30(b)(6) Dep. at 121:21-122:6).
Infineon argues that the accused products work the same way as
the prior art depicted in Figure 1. Although Infineon's products
use intervening circuitry, including multiple inverters, charged
by a "clock source" to supply the charge to the second terminal
of the boosting capacitor, Infineon asserts that its products are
no different than the prior art. According to Infineon, the
inclusion of additional intervening circuitry does not alter the
"clock source" in a meaningful way the charge applied to the
second terminal of the boosting capacitor remains a "clock
source." Since the Foss patents disclaimed the use of a "clock
source" to charge the boosting capacitor, Infineon argues that
Hatteras and the other accused products do not infringe the
asserted Foss claims.
MOSAID responds by arguing that the accused products charge the
boosting capacitor from local "clock signals," not "clock
sources." MOSAID argues that Infineon misinterprets the phrase
"clock sources" to include "clock signals." According to MOSAID,
these are two different and distinct concepts. MOSAID argues that
a "clock signal" is a voltage, whereas a "clock source" is
structure, i.e., a circuit, which in the Foss patents refers
only to the "master clock source," a circuit responsible for
establishing the overall timing of all local "clock signals."
One problem with MOSAID's argument is that the Foss patents'
specifications use the terms "clock sources" and "clock signals"
interchangeably.*fn11 See, e.g., '654 patent at 1:40-42; 1:51-58; 4:28-41; 5:24-30; 6:30-32. One conspicuous example of
how the terms are used interchangeably to refer to a voltage is:
Clock sources are applied to the gates of the
various transistors as follows: Φ1 to the gate of
transistor 25,/Φ1 to the gate of transistor 20,
Φ2 to the gate of transistor 21, and /Φ2 to
the gate of transistor 26.
Boosted clock signals are applied to the gates of
the various transistors as follows: Φ1 to the
gate of transistor 23, /Φ1 to the gate of
transistor 18, Φ2 to the gate of transistor 17
and /Φ2 to the gate of transistor 24.
'654 patent, col. 4:11-19 (emphasis added). That excerpt, which
describes Figure 3 of the Foss patents, illustrates that "clock
sources," at least some of the time, may include "clock signals."
Dr. Richard Foss, the first named inventor on the Foss patents,
agrees with this position, having testified that there is no
meaningful difference between a "clock source" applied to an
inverter and its "clock signal" output. (See Foss 30(b)(6) Dep.
Another problem with MOSAID's argument is that the patent
disclaims the use of any "clock source," not just a "master clock
source." Under MOSAID's definition of "clock source," there can
be only one. However, that definition would exclude the
embodiment depicted in Figure 1 and the "clock sources" used to
charge boosting capacitors 9 and 11 because the Foss
specifications clearly state that there are two different clock
sources. See, e.g., '654 patent, 1:40-42 (referring to one
clock source and then "another clock source"). Because MOSAID's proposed construction of "clock sources" does not comport with
the patents themselves, it must be rejected.*fn12
MOSAID tries to differentiate between the accused products and
the prior art circuit shown in Figure 1 by arguing that the
inverters shown in Figure 1 "represent the output stage of the
oscillator clock source, and therefore the clock source output
stage directly supplies charge to capacitors 9, 11,"*fn13
whereas the inverters in Infineon's products are not part of the
actual "clock source," and therefore the "clock source" output is
not directly supplied to the boosting capacitor. MOSAID's
distinction, however, is unsupported and based solely on attorney
argument. Contrary to MOSAID's argument that inverters 8 and 10
are part of the "clock source," the specification clearly states
that the clock sources are connected through the inverters,
i.e., the outputs of the clock sources are applied to the
inverters, which in turn output the signals to the second
terminal. See '654 patent 1:51-53 ("A clock source is connected
through an inverter 8 and via capacitor 9 to node 4, and another
clock source is connected through an inverter 10 through
capacitor 11 to node 3.") and 6:30-32 ("[T]he prior art pump
[Figure 1, which includes the inverters,] . . . is driven by an oscillator 40, which
provides clock signals, e.g., Φ1, Φ2, /Φ1 and
This description of how the clock source is applied to the
second terminal comports with an inventor's deposition testimony.
Testifying as a 30(b)(6) witness, Dr. Foss stated in relevant
Q. And the output of the ring oscillator [, i.e.,
the clock source,] is the input to inverters eight
A. That is the presumption, yes.
* * *
Q. And the difference between phi 1 and phi 2 and
input to inverters eight and ten is that it's the
same as phi 1 and phi 2 but in undelayed and
unamplified form, right?
A. Undelayed and unamplified form, yes.
(Foss 30(b)(6) Dep. at 125:7-19).
In sum, the patentees used "clock signal" and "clock source"
interchangeably. As a result, MOSAID's attempt to argue that the
second terminal of the boosting capacitor in Infineon's accused
products charge from a local "clock signal" rather than a "clock
source" is inapt. There is no dispute that in the accused
products, like the prior art, a "clock source" is supplied
through an inverter to charge the second terminal of the boosting
capacitor. Accordingly, the undisputed facts demonstrate that
Hatteras and the other accused products use a "clock source" to
charge the boosting capacitor, falling squarely within the clock
source disclaimer. As a result, the accused products do not
literally infringe claims 1-3, 5-9, 13-15, 17-21, and 24 of the '620 patent, claims 1, 10-11, and 20 of the '201
patent, and claims 1, 3-4 and 6 of the '654 patent.
MOSAID argues in the alternative that even if the accused
products do not meet this limitation literally, they meet it
under the doctrine of equivalents. MOSAID, however, is wrong.
Having disclaimed the use of clock sources to charge the boosting
capacitor, MOSAID cannot use the doctrine of equivalents to
recapture that which it specifically excluded from the claims.
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
344 F.3d 1359, 1378 (Fed. Cir. 2003) ("The patentee cannot reach, through
equivalency, that which was disclaimed in order to obtain the
patent."); SciMed Life Sys., Inc. v. Advanced Cardiovascular
Sys., Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001) ("Having
specifically identified, criticized, and disclaimed the [accused
structure], the patentee cannot now invoke the doctrine of
equivalents to `embrace a structure that was specifically
excluded from the claims.'") (quoting Dolly, Inc. v. Spalding &
Evenflo Cos., 16 F.3d 394, 400 (Fed. Cir. 1994)). Consequently,
the accused products do not infringe the asserted Foss claims,
either literally or under the doctrine of equivalents.
2. The "Second Switch" Limitation
MOSAID moves for summary judgment that Hatteras contains a
circuit that satisfies the "second switch" limitation of the '654
patent "a second switch between the first terminal of the
boosting capacitor and a capacitive load."*fn14 The parties
designate the circuit in question as "S2." Infineon argues that Hatteras does not infringe the "second
switch" limitation because S2 is not a "switch" as that term has
been defined by the Court.
"Switch" has been defined as "a device for making, breaking, or
changing the connection of a circuit, but not a transistor
introducing a threshold voltage drop or a transistor configured
as a diode." (Markman Order at ¶ 39, emphasis added).
Infineon, relying on its noninfringement expert's opinion, argues
that S2 is not a switch because it introduces a threshold voltage
drop and is configured as a diode. (Rebuttal Expert Report of
Joseph C. McAlexander Regarding Non-Infringement of MOSAID
Patents ("McAlexander's Noninfr. Report") at 181). However, in
reaching that conclusion, Infineon's expert relies on simulations
that appear not to be before the Court and there is no
explanation how they were run, on what Infineon parts they were
run, and what the results were.
MOSAID on the other hand argues, and appears to support its
argument, that there is no threshold voltage loss because S2 is
over-driven. (See Suppl. to Soderman Infringement Report Dated
Oct. 15, 2004 at ¶ 38). However, MOSAID does not appear to
support its argument that S2 does not function as a diode during
the relevant time period. Given this factual dispute as to
whether S2 functions as a diode, the Court cannot resolve by
summary judgment whether this claim limitation is met by
3. The "Clock Signal" Limitation
Infineon argues that even if Hatteras is found to contain a
"second switch," it does not infringe the "clock signal"
limitation "the first and the second switch being driven by
clock signals" because the signal that drives the alleged
"second switch" is not a "clock signal." According to Infineon, the "clock signal," as defined by the
Court, must be a digital signal. (See Infineon's Opp'n Br. at
12-13). Because the signal applied to the gate of S2 is analog,
not digital, Infineon argues Hatteras does not meet this
MOSAID argues that Hatteras meets the "clock signal"
limitation. MOSAID contends that a "clock signal" is a "timing
signal used to synchronize operation," whether in analog or
digital form. (MOSAID's Br. Against Infineon at 17).
The Court agrees with MOSAID. There is no dispute that the
signal driving the gate of transistor S2 is a timing signal used
to synchronize its operation. Although it may be analog in form,
there is nothing in the specification or claims that would
preclude a "clock signal" from including either form.
Consequently, assuming arguendo Hatteras contains a "second
switch," the Court finds that Hatteras meets the "clock signal"
C. Claims 1 and 10 of the Foss '201 Patent and the
"Switching Means" Limitation
Claims 1 and 10 include a "switching means" limitation. That
[S]witching means including a first switch between
one level of the voltage supply and the first
terminal of the boosting capacitor and a second
switch between the first terminal of the boosting
capacitor and a capacitive load, the first and second
switches being driven by clock signals, the switching
means alternately connecting the first terminal of
the boosting capacitor to the voltage supply and to
the capacitive load while alternating the level of
the voltage supply connected to the second terminal
of the boosting capacitor to pump the voltage on the
capacitive load to a boosted voltage level greater
than and of the same polarity as the DC voltage
supply to provide a boosted voltage supply.
'201 patent, claims 1 and 10 (emphasis added). "Switching means" was found to be a means-plus-function
limitation under 35 U.S.C. § 112, ¶ 6. The Court identified
transistors 23 and 24 as the structure specifically corresponding
to the function of "alternately connecting." (Markman Op. at
62). Transistor 23 is an NMOS transistor and transistor 24 is a
Infineon argues that its accused products do not infringe
because they do not use a PMOS transistor to perform the function
of "alternately connecting." In lieu of a PMOS transistor, they
use a fully-switched NMOS transistor.
MOSAID does not dispute this. Instead, it argues that whether
Infineon's products use an NMOS instead of a PMOS transistor is
irrelevant for literal infringement purposes because the Court
did not specify the type of transistors that correspond to the
"switching means." That argument is simply wrong. Paragraph 30 of
the Markman Order specifically states that transistors 23 and
24 are the corresponding structure. Although transistor 24 is
misidentified in Figure 3, MOSAID does not and cannot dispute
that transistor 24 is a PMOS transistor. (See Foss 30(b)(6)
Dep. at 128:2-11 (stating same)). Thus, MOSAID cannot possibly
dispute that the Court identified a PMOS transistor as
To determine literal infringement of a means-plus-function
limitation, "the accused device [must] perform a function
identical to that identified in the means clause." Ishida Co. v.
Taylor, 221 F.3d 1310, 1316 (Fed. Cir. 2000). If the accused
structure "performs the identical function, an accused device
literally infringes a claim [limitation] under § 112, ¶ 6 only if
it is insubstantially different from the corresponding structure
in the patent specification." Id. at 1317. For a
means-plus-function limitation, an accused device infringes under
the doctrine of equivalents only if there is an "insubstantial difference"
between the corresponding structure and any after-invented
structure found in the accused device. Id.
Here, there is no dispute that the fully-switched NMOS
transistor performs the identical function. Thus, the question of
infringement hinges on whether that NMOS transistor is
"insubstantially different" from the claimed PMOS transistor.
MOSAID asserts Infineon's use of an NMOS transistor is
insubstantially different from the corresponding structure.
Infineon counters this assertion by arguing that NMOS and PMOS
transistors are not equivalent. For support, Infineon cites to
the deposition testimony of Dr. Foss, who, testifying as a
30(b)(6) witness for MOSAID, stated that PMOS and NMOS
transistors work in significantly different ways and are not
substitutes for each other. (See Foss 30(b)(6) Dep. at
225:11-226:14). Thus, by MOSAID's own admission, there are more
than insubstantial differences between the two types of
MOSAID asserts that the Foss testimony cited by Infineon
concerns the Sanyo design, not a patent in suit. MOSAID is
incorrect. It is clear from Dr. Foss' testimony that the context
of the discussion concerned the Foss '201 patent, not the Sanyo
design. (See id. at 224:3-225:10). Notably, MOSAID, who bears
the burden of coming forward with evidence to show there is a
genuine issue for trial, provides no evidence demonstrating that
an NMOS transistor is insubstantially different from a PMOS
transistor. Consequently, the Court finds that Infineon's accused
products do not literally infringe claims 1 and 10 of the '201
patent. Additionally, because NMOS transistors existed at the
time the Foss inventions were first conceived, and could not be
considered an after-invented technology, the accused products do
not infringe these claims under the doctrine of equivalents. D. Infringement Under The Doctrine Of Equivalents
Infineon moves for summary judgment that the limitations of the
asserted claims of the patents in suit are not infringed under
the doctrine of equivalents. Infineon argues that MOSAID proffers
nothing more than conclusory allegations of equivalence rather
than the particularized, limitation-by-limitation analysis
required by Federal Circuit jurisprudence.
MOSAID argues that summary judgment should be denied for three
reasons. First, it argues that at the summary judgment stage, it
need not proffer a particularized, limitation-bylimitation
analysis. Rather, it need only satisfy a minimal burden of proof
as articulated in the Supreme Court case
Warner-Jenkinson.*fn15 Second, it argues that Infineon's
motion is premature because it was filed before expert
depositions were taken and during those depositions MOSAID will
have an opportunity to elicit testimony from its experts
regarding infringement under the doctrine of equivalents. And
third, MOSAID argues that it does offer particularized evidence
of infringement under the doctrine of equivalents in the
Declaration of David Taylor,*fn16 which was submitted in
support of its opposition brief.
The Supreme Court in Warner-Jenkinson articulated what may
appear to be at first blush a relatively minimal burden that a
patent holder must carry in order to survive a motion for summary
judgment of noninfringement under the doctrine of equivalents.
The Court stated: "Where the evidence is such that no reasonable
jury could determine the elements to be equivalent, district
courts are obligated to grant partial or complete summary
judgment." Warner-Jenkinson, 520 U.S. at 39 n. 8 (emphasis added).
However, contrary to MOSAID's argument, the standard's reference
to "elements" expressly requires the patentee to proffer a
limitation-by-limitation analysis. Otherwise, it would be
impossible for the Court to determine whether the particular
element in the accused device is equivalent to the claim
limitation. Indeed, the Federal Circuit dispelled any doubt that
a proffer of evidence pertaining to the invention as a whole is
inadequate, when it stated: "Whether a claim is infringed under
the doctrine of equivalents may be decided on summary judgment if
no reasonable jury could determine that the limitation [of the
claim] and the element [of the accused product] at issue are
equivalent." Zelinski v. Brunswick Corp., 185 F.3d 1311, 1317
(Fed. Cir. 1999) (citing Warner-Jenkinson, 520 U.S. at 39 n.
8). Thus, Warner-Jenkinson and its progeny require the patent
holder to proffer evidence of equivalence on a
Here, MOSAID has failed to satisfy that particularized showing.
The expert reports that MOSAID relies on to demonstrate
equivalence for Lines and Foss claims are inadequate. For
example, the totality of Richard Greene's*fn17 doctrine of
equivalents analysis with regard to the '654 patent states:
Based on the foregoing analysis, I conclude that each
and every element or its equivalent of the above
cited claims of the '654 patent is contained in the
relevant circuitry of the INFINEON 128M MOBRAM DD1B
S17. It is therefore my expert opinion that the
INFINEON 128M MOBRAM DD1B S17 infringes the following
claims of the '654 patent literally and under the
doctrine of equivalents: Claims 1, 3, 4 and 6. (Expert Report of Richard Greene at 54). David Taylor*fn18
also chose not to perform a limitation-by-limitation analysis in
his expert report, stating:
In my opinion, the accused Infineon 256M RLDRAM DD1
(Blaze) memory product contains all of the elements
of Claim 15 of the '643 patent and therefore
literally infringes that claim. Additionally, because
the accused Infineon 256M RLDRAM DD1 (Blaze) product
has substantially the same function, operates in
substantially the same way, and produces
substantially the same result as the claimed circuit,
any differences between the circuits in the accused
Infineon 256M RLDRAM DD1 (Blaze) memory product and
claim 15 of the '643 patent are insubstantial.
(Taylor Infr. Report at ¶ 130). In short, these reports either
compare the invention as a whole to the asserted claims, which is
legally improper under the doctrine of equivalents,*fn19
merely regurgitate the doctrine of equivalents test without
actually applying it to the limitation at issue.
MOSAID's argument that the inadequacies of these expert reports
can be shored up by posing questions to its own experts during
expert depositions concerning their position on equivalency is
incorrect. Under Rule 26(a)(2)(B), an expert "report shall
contain a complete statement of all opinions to be expressed
and the basis and reasons therefor." Fed.R.Civ.P. 26(a)(2)(B)
(emphasis added). Here, it is beyond contestation that MOSAID's
expert reports fail to explain how the asserted claims are
infringed under the doctrine of equivalents. Accordingly, under
Rule 26(a)(2)(B), MOSAID cannot elicit the experts' bases for
asserting equivalency when those bases have not been expressly
set forth in their expert reports. MOSAID's argument that it carried its particularity burden
through the Taylor declaration is also unavailing. This Court
entered a scheduling order setting forth the schedule by which
the parties would exchange expert reports. Affirmative expert
reports concerning issues upon which the party bore the burden
were due October 15, 2004. Because MOSAID is the patentee and
bears the burden of proof on infringement, Taylor's infringement
expert report was due on October 15, 2004. Thus, as of that date,
Taylor was required to set forth all of his opinions and bases
for those opinions. See Fed.R.Civ.P. 26(a)(2)(C) (stating
that disclosure of expert reports "shall be made at the times and
in the sequence directed by the court"). However, the Taylor
declaration MOSAID seeks to rely on was not submitted until over
one month later, on November 22, 2004. Consequently, regardless
of the Taylor declaration's adequacy, the declaration must be
struck as an improper attempt to circumvent the expert discovery
schedule established by this Court. Because MOSAID can point to
no other source for a particularized analysis of the doctrine of
equivalents, it has not carried its burden in opposing Infineon's
summary judgment motion.
In sum, MOSAID has failed to proffer any evidence giving rise
to a genuine issue of fact for trial. The vague and conclusory
statements regarding infringement under the doctrine of
equivalents that MOSAID has relied upon to rebut Infineon's
motion are, as a matter of law, insufficient to stave off summary
judgment. Therefore, the Court concludes that the accused
products do not infringe the asserted Lines and Foss claims under
the doctrine of equivalents. II. INVALIDITY
A. Anticipation: § 102(b) "On Sale" Bar
Under 35 U.S.C. § 102(b), a person is entitled to a patent
unless "the invention was . . . on sale in this country, more
than one year prior to the date of the application for patent in
the United States." In order to prove that an offer for sale was
made, an accused infringer must demonstrate by clear and
convincing evidence that the invention: 1) was the subject of a
commercial offer for sale in this country; and 2) was ready for
patenting before the U.S. patent application was filed. Pfaff v.
Wells Elecs., Inc., 525 U.S. 55, 67 (1998). The Federal Circuit
has held that whether an offer of sale has taken place is
governed by Federal Circuit law, "to be analyzed under the law of
contracts as generally understood," including the Uniform
Commercial Code. Group One, Ltd. v. Hallmark Cards, Inc.,
254 F.3d 1041, 1047 (Fed. Cir. 2001).
The Federal Circuit has not directly addressed what it means
for an "offer of sale" to be "in this country." Before the
Federal Circuit's conception, the Ninth Circuit stated that "[a]n
offer for sale, made in this country, is sufficient prefatory
activity occurring here, to bring the matter within the statute."
Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 434 (9th Cir.
1973). Rephrasing that statement, the Court of Federal Claims
articulated that a "product is `on sale' in the United States,
within the proscription of the statute, if substantial activity
prefatory to a sale occurs in the United States." MDS Assocs.,
Ltd. P'ship v. U.S., 37 Fed. Cl. 611, 631 (1997), aff'd,
135 F.3d 778 (Fed. Cir. 1998) (quoting Robbins Co.,
482 F.2d at 434).
MOSAID moves for summary judgment arguing that the Original
Equipment Manufacturer Agreement in Principle ("OEM Agreement")
is not prior art under 35 U.S.C. § 102(b) for two reasons: (1) it
was not an offer for sale made in this country; and (2) it was
not a definite offer for sale. The OEM Agreement was reached between
MOSAID and Sanyo, and required Sanyo to sell to MOSAID Fast 1M
DRAM chips and their derivatives. These chips appear to have
incorporated the word line driver of the Lines patents and the
voltage pump of the Foss patents. Infineon contends that MOSAID
bargained with and received an offer of sale from a Sanyo
Semiconductor ("Sanyo U.S.")*fn20 employee based in a New
Jersey office, not from Sanyo Electric Co., the Japanese
corporation ("Sanyo Japan"), and thus the OEM Agreement was a
definite offer of sale made in this country. In an effort to
buttress that contention, Infineon argues that substantial
activity prefatory to the OEM Agreement occurred in the United
States. (Infineon's Opp'n Br. at 22-23). Infineon relies on five
alleged facts to demonstrate that Sanyo U.S. was substantially
involved in making the offer for sale. However, as explained
below, these five alleged facts do not raise a genuine issue of
material fact precluding summary judgment.
First, Infineon contends that Mr. Aki Goto, a Sanyo U.S.
employee based in New Jersey, was Sanyo's primary negotiator for
the OEM Agreement. In support of that contention, Infineon
submits only the deposition testimony of Iain Scott, the person
who negotiated on behalf of MOSAID for the OEM Agreement. But
that uncorroborated evidence is insufficient under the case law
to establish the OEM Agreement as § 102(b) prior art. See
Finnigan Corp. v. Int'l Trade Comm'n, 180 F.3d 1354, 1367 (Fed.
Cir. 1999) (stating that a witness' uncorroborated testimony is
not legally sufficient evidence of invalidating activities under
§ 102(b)). Further, that evidence shows that MOSAID fought very
hard with Sanyo Japan for the right to have an OEM Agreement, and that Sanyo Japan is the company that made the
offer to sell DRAM chips to MOSAID, not Sayno U.S.*fn21
Second, Infineon contends that the OEM Agreement executed by
Sayno was sent from Sanyo's New Jersey location to MOSAID.
Although this is true, it ignores the controlling fact that the
agreement was signed by Sanyo Japan. Further, the parties
understood that this agreement was binding on Sanyo Japan, not
necessarily Sanyo U.S.*fn22 Additionally, mere transmittal
of the agreement from the New Jersey location to MOSAID does not
constitute substantial activity.
Third, Infineon relies heavily on the fact that MOSAID faxed a
signed copy of the OEM Agreement back to Sanyo in New Jersey.
Although true, the content of the fax cover sheet shows that
Sanyo Japan was the true party of interest. The sender of the fax
stated: "I will fax all of the signed pages directly to Japan.
The pages attached [and being sent to New Jersey] are for your
reference only." (Feb. 19, 1990 Fax Cover Sheet from MOSAID to
Aki Goto (emphasis added)).
Fourth, Infineon contends that the evidence establishes that
chips produced under the OEM Agreement were sent to MOSAID from
Sanyo in New Jersey. This contention is without merit. Infineon's
sole piece of evidence in support of this contention is the
deposition testimony of an ex-MOSAID employee.*fn23 That
testimony states that because Sanyo Japan was making the chips,
it did not matter to MOSAID whether they shipped them directly to
Canada, or shipped them to the U.S. and then to Canada.*fn24 Indifference as to
the path of delivery does not demonstrate that Sanyo U.S. was
substantially involved in forging the OEM Agreement.
And fifth, Infineon contends that a MOSAID purchase order under
the OEM Agreement was sent by MOSAID to Sanyo in New Jersey. This
contention is also without merit. The OEM Agreement concerned
only DRAM chips. However, the only purchase order Infineon relies
on concerns silicon wafers, not DRAM chips. Consequently, the
purchase order proves nothing with regard to the OEM Agreement.
In short, even assuming that MOSAID's offer was a commercial
offer for sale, Infineon does not offer evidence showing that
substantial activity prefatory to the OEM Agreement took place in
this country. Thus, the OEM Agreement is not prior art under §
102(b), and therefore summary judgment is granted in MOSAID's
B. Anticipation: § 102(g) "Prior Invention" Bar
MOSAID has moved for summary judgment that two DRAM chips the
Texas Instrument ("TI") Design and the Micron 4M DRAM do not
qualify as prior art for anticipation purposes under
35 U.S.C. § 102(g). Under § 102(g), a person is not entitled to a patent if
"before such person's invention thereof, the invention was made
in this country by another inventor who had not abandoned,
suppressed, or concealed it." 35 U.S.C. § 102(g)(2). "A prior art
device can anticipate a claimed invention under § 102(g)(2) if it
was conceived and reduced to practice prior to the filing date
of the patent." Sandt Tech. Ltd. v. Resco Metal and Plastics
Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001) (emphasis added). An
invention is conceived when the inventor forms the "definite and permanent idea of the complete and
operative invention." Cooper v. Goldfarb, 154 F.3d 1321, 1327
(Fed. Cir. 1998). Actual reduction to practice, the only
reduction to practice relevant in this case, is established when
the inventor proves that: 1) he constructed an embodiment that
met all the claim limitations; and 2) he determined that the
invention would work for its intended purposes. Id.
1. TI Design
MOSAID argues that Infineon cannot prove that the TI design,
which actually consists of two designs, the "old" design and the
"new" design, is prior art under § 102(g). The Lines U.K.
application was filed on April 6, 1990. Consequently, in order
for the two designs to qualify as prior art under § 102(g),
Infineon must proffer evidence showing that they were conceived
and reduced to practice before that date.
Taking the "new" design first, it is undisputed that it was not
conceived until May 1990. (Expert Report of Robert N. Rountree at
¶ 20). Because that conception date is after the Lines U.K.
application was filed, the "new" design is not prior art under §
Turning to the "old" design, the following facts are
undisputed. Before February 1990, the TI engineers worked on
designing a circuit that used a word line driver circuit that
included a PMOS pass transistor to apply a high Vpp voltage
to the selected word line. By February 16, 1990, TI inventors
completed the design of the "old" circuit. By March 2, 1990, TI
designers developed a computer simulation of the row decoder and
word line driver circuitry and found that it worked for its
intended purpose. (See Expert Report of Robert N. Rountree ¶¶
13-15). TI did not make a chip embodying the row decoder and word
line driver circuitry before April 6, 1990. Thus, the Court is presented with the question whether the
simulation of the "old" design was a valid reduction to practice.
MOSAID never takes issue with Infineon's expert who said that a
computer simulation was sufficient to achieve reduction to
practice. Instead, it merely insists that without a physical
embodiment, there cannot be reduction to practice. MOSAID does so
without submitting any case law holding that simulations cannot
evidence a reduction to practice.
Although MOSAID did cite to Pfaff v. Wells Elecs., Inc.,
525 U.S. 55 (1998) at the Markman hearing,*fn25 that case is
inapposite. In Pfaff, the Supreme Court was confronted with the
issue of "whether the commercial marketing of a newly invented
product may mark the beginning of the 1-year period [under §
102(b) for purposes of the on-sale bar] even though the invention
has not yet been reduced to practice." Id. at 57. In defining
that as the issue sub judice, the Court dropped a footnote
describing what constitutes a "reduction to practice." It stated:
"A process is reduced to practice when it is
successfully performed. A machine is reduced to
practice when it is assembled, adjusted and used. A
manufacture is reduced to practice when it is
completely manufactured. A composition of matter is
reduced to practice when it is completely composed."
Id. at 57 n. 2 (quoting Corona Cord Tire Co. v. Donovan Chem.
Corp., 276 U.S. 358, 383 (1928)). However, in doing so, the
Supreme Court did not state that this is an exclusive list of
examples of what constitutes a reduction to practice; it did not
state that these examples set a floor on what could qualify as a
reduction to practice; nor was the question of whether a
simulation could constitute a reduction to practice before the
Court. Indeed, this Court finds it highly unlikely that the Supreme Court would rely on a quote from
a 1928 case to establish the minimum form an embodiment must take
to qualify as a reduction to practice without clearly
articulating that it was doing so. Therefore, the question of
whether a simulation can legally constitute a reduction to
practice remains undecided.
The Court, at this time, is loathe to adopt MOSAID's position
and conclude that a computer simulation can never be a reduction
to practice. Although the Court is not aware of any case law that
has found a computer simulation to be a reduction to practice,
neither has case law ruled out the possibility that it may
suffice. See, e.g., McDonnell Douglas Corp. v. U.S.,
670 F.2d 156, 161 (Ct.Cl. 1982) (suggesting that a computer simulation
may be a valid reduction to practice, but not if subsequent,
actual physical testing proves that it is inadequate). Obviously,
not all simulations constitute an actual reduction to practice.
The Court appreciates MOSAID's position that an actual physical
embodiment of the device is necessary to ensure the device will
work for its intended purpose. Of course, that remains the
paradigm for demonstrating a reduction to practice. But surely,
in this technologically advanced society of ours, there are areas
of science where a successfully run simulation represents the end
of the inventive process and the construction of the physical
embodiment is but a matter of mere routine and mechanical
application. In that case, and only in that case, it seems
appropriate that a simulation should be a valid reduction to
Here, whether a simulation of a word line driver circuit in
1990 satisfies that strict standard cannot be determined.
Although Infineon has presented evidence that the TI engineers
understood from the simulations that the circuitry would work for
its intended purpose, it has not addressed what trials and
tribulations, if any, had to be endured in 1990 to convert a
simulation of a circuit into the actual physical embodiment. MOSAID, on the
other hand, has not proffered any evidence demonstrating that a
circuit simulation in 1990 could not be a reduction to
practice.*fn26 Consequently, it appears there is a genuine
issue of material fact that precludes granting summary judgment
as to the TI "old" design.
2. Micron 4M DRAM
MOSAID argues that the Micron 4M DRAM design is not prior art
under § 102(g). The undisputed facts are as follows: As of March
26, 1990, Micron had a schematic showing a word line driver
circuit and voltage pump. Micron made chips based on the March
26, 1990 design in April 1990. Micron performed its first tests
of record on April 9 and its second tests on April 11.
From that simple recitation of facts, it is clear that Infineon
cannot establish an actual reduction to practice before April 6,
1990. As stated above, in order to show reduction to practice, it
must be shown that an embodiment was constructed and worked for
its intended purpose before the filing date of the patent.
Cooper, 154 F.3d at 1327. Infineon has not shown that the
experimental chips were tested and, therefore, were understood to
work for their intended purpose before April 9, 1990. Because April 9, 1990 is three days after the Lines U.K.
application was filed, the Micron 4M DRAM cannot be prior art
under § 102(g).
C. Anticipation: § 102(b) "Printed Publication" Bar
MOSAID seeks summary judgment that several references, which
qualify as printed publications under 35 U.S.C. § 102(b), do not
anticipate the asserted claims under the printed publication bar.
Under 35 U.S.C. § 102(b), a person is not entitled to a patent if
"the invention was . . . 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." If such
a printed publication exists, it "anticipates a patent claim if
[it] discloses, either expressly or inherently, all of the
limitations of the claim." EMI Group North Am., Inc. v. Cypress
Semiconductor Corp., 268 F.3d 1342, 1350 (Fed. Cir. 2001). An
anticipated claim is an invalid claim.
MOSAID argues that the Fujii article, "A 45-ns 16M DRAM with
Triple-well Structure," IEEE Journal of Solid-state Circuits,
Vol. 24, No. 5 (Oct. 1989), does not anticipate the asserted
claims of the Lines patents because it does not teach or suggest
a controlled, substantially constant high voltage Vpp, which is
required by all of the asserted Lines claims.*fn27 Infineon
disagrees, arguing that Fujii does show a substantially constant
high voltage Vpp during word line selection. The question of what constitutes a "substantially constant"
high voltage was not expressly addressed by the Court in its
Markman Opinion because it was not before the Court at that
time. However, in discussing the prior art and its use of
uncontrolled voltages, the Court stated:
An uncontrolled voltage is a voltage that may vary
considerably over time, as opposed to a
substantially constant voltage. In the prior art,
an uncontrolled voltage was created by inserting a
boosting capacitor between the pass transistor and
the word line. . . . This would result in a "word
line voltage that increases over a period [of time]."
(Markman Op. at 11 n. 11). Thus, by implication, a
"substantially constant voltage" is a voltage that does not vary
considerably over time. Obviously, this begs the question of what
does "considerably" mean. Unfortunately, the parties have not
briefed this issue and therefore the Court finds itself in a
position where it cannot definitively provide an answer to the
parties. This uncertainty, however, does not preclude denial of
summary judgment with regard to Fujii because the Court finds
that a genuine issue of fact exists.
MOSAID's motion is predicated on the argument that the high
voltage at issue is generated by a boosting capacitor.*fn28
According to MOSAID, use of a boosting capacitor varies the
voltage applied to the word line from 4 to 8 volts each memory
cycle. Although the Court agrees that a variation of about 4
volts is not substantially constant, the problem with MOSAID's argument is that a memory cycle does not appear to be the
relevant time frame within which the Court should be analyzing
the voltage level. Instead, it appears the appropriate time frame
is the "active memory cycle," i.e., the time when the voltage
is actually being applied to the word line such that data is
being written into or read out of a memory cell. In that case, it
appears the voltage is varying far less, from 7 to 7.5 volts.
(See MOSAID's Br. in Support of Its Motions for Summ. J.
Against Samsung and Infineon ("MOSAID's Br. Against Samsung &
Infineon") at 24-25 (quoting '703 patent, Application No.
09/919,752, 9/25/02 Amendment at 3)). The voltage difference
during that time frame is small enough that it may be considered
"substantially constant."*fn29 Thus, whether Fujii teaches
the use of a substantially constant high voltage Vpp likely
depends on the relevant time frame. Because it is unclear which
time frame is the relevant time frame, the Court can only
conclude that there is a genuine issue of material fact whether
Fujii anticipates the asserted Lines claims.
MOSAID asserts that Kajigaya, U.S. Patent No. 5,602,711, is
missing two limitations found in the asserted Foss
claims.*fn30 Those two limitations are: (1) a "second switch
driven by clock signals;" and (2) "alternately
connecting/switching the first terminal of the boosting capacitor to the voltage supply and to the capacitive load."
Infineon disagrees, arguing that MOSAID fails to rebut its
evidence that those two limitations are met. Infineon is correct.
First, MOSAID argues that Kajigaya lacks a "second switch."
"Switch" has been defined as "a device for making, breaking, or
changing the connection of a circuit, but not a transistor
introducing a threshold voltage drop or a transistor configured
as a diode." (Markman Order at ¶ 39). MOSAID argues that the
transistor Infineon identifies as the "second switch" introduces
a threshold voltage drop and therefore cannot be a "switch" as
defined by the Court.
In Kajigaya, the transistor that Infineon identifies as the
"second switch" is an NMOS transistor. Contrary to MOSAID's
assertion, there is an issue of fact whether that transistor
allows the voltage passing from the boosting capacitor to the
capacitive load to drop by a threshold voltage. MOSAID has not
adequately shown that it does. In fact, although it cannot be
confirmed, it appears that the transistor identified as the
"second switch" allows the total voltage applied to its drain
(2Vcc Vth) to pass without introducing a threshold
Second, MOSAID argues that Kajigaya does not "alternately
connect" the first terminal of the boosting capacitor because the
transistor identified as the "second switch" never shuts off.
However, in support of this argument, MOSAID provides no evidence
other than the conclusory statement of its expert. (See
Rebuttal Expert Report of Richard Greene at ¶ 72 ("As the
transistor 40 does not turn off, the function of alternately
connecting cannot be performed, only that of simultaneously
connecting.")). In light of that inadequate showing, and because
Infineon's expert contends that it does shut off,*fn31 the
Court cannot resolve this issue on summary judgment. Consequently, MOSAID has failed to dispel any genuine issues of
material fact and, therefore, summary judgment must be denied as
MOSAID argues that Yanagisawa, U.S. Patent No. 5,150,325, lacks
the same two limitations that it alleged Kajigaya was missing.
See Section II.C.2, supra. Infineon argues that material
issues of fact preclude summary judgment as to those two
The circuit shown in Figure 42c of Yanagisawa shows that the
transistor Infineon identifies as the "second switch," NMOS
transistor T6, will not allow the full voltage applied to the
drain to pass to its source. Instead, it will suffer a threshold
voltage drop. (Rebuttal Expert Report of Richard Greene at ¶ 97).
Infineon does not dispute that there is some threshold voltage
loss. (McAlexander Invalidity Expert Report at Ex. H, p. 13).
Consequently, the Court finds that Yanagisawa cannot anticipate
the asserted Foss claims, and summary judgment is granted in
4. Harmon, Holbrook, Horiguchi and Rosenthal*fn32
MOSAID moves for summary judgment that these references do not
anticipate any of the asserted Foss claims. Infineon responds by
arguing that it "does not rely on any of these references for
anticipation of the claims asserted by MOSAID." (Infineon's Opp'n
Br. at 32). MOSAID did not dispute this representation in its
reply brief. Rather, it noted for the first time at the Markman hearing that Infineon allegedly relied on these
references for anticipation purposes as demonstrated by the
McAlexander's Invalidity Expert Report. (See Summ. J. Argument
Tr. at 50 (directing the Court to Exhibits F, G, and H of the
McAlexander Invalidity Expert Report)). Having reviewed the
sections highlighted by MOSAID of McAlexander's report, the Court
disagrees with MOSAID's assertion.
To the extent that McAlexander referred to these references, he
did so in the context of an obviousness, not anticipation,
analysis. This is clear from his use of the phrase "in view of"
at the beginning of each invalidity claim chart. (See, e.g.,
McAlexander Invalidity Expert Report at Ex. H, pp. 22 and 25).
Accordingly, Infineon accurately represented that it does not
assert these printed publications as anticipatory references and,
therefore, summary judgment is inappropriate under these
A. Prosecution Laches
Infineon asserts as an affirmative defense that the asserted
patents in suit are unenforceable due to prosecution laches.
Prosecution laches renders a patent unenforceable if there has
been an "unreasonable and unexplained delay in prosecution even
though the applicant complied with pertinent statutes and rules."
Symbol Techs., Inc. v. Lemelson Med., 277 F.3d 1361, 1363, 1368
(Fed. Cir. 2002). The primary purpose behind the prosecution
laches doctrine is to protect the public's intervening adverse
rights. See id. at 1365. A patentee may tread on the public's
intervening adverse rights by engaging in one of two tactics, or
a combination of the two. The patentee may engage in "submarine
patenting," i.e., he may file a patent application and then unduly delay prosecution such that a patent does not
issue for many years. The application acts like a submarine,
undetected and waiting to be used. Once the public, unaware of
the pending application, expends time, effort, and resources to
further advance the same technology, the patent suddenly issues,
or surfaces, and the patentee attempts to reap the pecuniary
rewards. See, e.g., Woodbridge v. United States, 263 U.S. 50
(1923) (delaying nine and a half years in prosecuting patent in
suit); Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463
(1924) (delaying eight years in prosecuting patent in suit). Or,
the patentee can timely prosecute an application before the PTO,
obtain a patent, wait for intervening developments in the field,
and then seek issuance of additional, presumably broader patents
covering that technology. See, e.g., Symbol Techs., Inc. v.
Lemelson Med., 301 F. Supp. 2d 1147, 1154-57 (D. Nev. 2004)
(patentee delayed between eighteen to thirty-nine years before
filing the applications that issued as the patents in suit);
Chiron Corp. v. Genentech, Inc., 268 F. Supp. 2d 1139, 1142
(E.D. Cal. 2002) (patentee delayed over ten years before filing
the application that issued as the patent in suit). This case
concerns the latter tactic, if any.
MOSAID moves for summary judgment on Infineon's prosecution
laches defense. MOSAID argues that Infineon points to nothing
more than the time elapsed between the date the initial Lines and
Foss patent applications were filed and the date the patents in
suit issued. MOSAID argues that, as a matter of law, delay alone
is not a sufficient basis upon which prosecution laches may be
found, and thus summary judgment is appropriate.
Infineon responds by arguing that summary judgment should be
denied because there remain issues of fact regarding the
reasonableness of MOSAID's delay in prosecuting the patents in
suit. MOSAID finished developing the technology underlying the
Lines and Foss families by April 1990, when it filed the U.K. applications. MOSAID then
relied on that filing date when it submitted the initial Lines
and Foss U.S. applications. According to Infineon, over the next
twelve years, MOSAID engaged in a campaign of filing continuation
and divisional applications in the Lines and Foss families in an
effort to obtain ever broader claims. In the interim, Infineon
developed and sold DRAM products in the United States. Those
products are now accused of infringing MOSAID's later-obtained
claims. Infineon argues that because MOSAID cannot demonstrate
that this twelve-year delay is reasonable, the Court should deny
Although Infineon appears to assert that all of the asserted
patents are unenforceable because a twelve-year delay is
unreasonable, not all of the patents issued twelve years after
the priority date. Thus, the Court interprets Infineon's
opposition to contend that only those asserted patents that
issued twelve years after the prior date after April 2002 are
unenforceable due to prosecution laches. Only two patents fit
that description; both the Foss '654 patent and the Lines '703
patent issued over thirteen years after the priority date. As for
the other earlier-issued patents, the Court finds that Infineon
has not made any showing nor argued that the prosecution of those
patents was due to an unexplained and unreasonable delay and,
therefore, grants partial summary judgment in favor of MOSAID.
With regard to the '654 and '703 patents, the Court believes
that a thirteen-year time gap raises some serious questions as to
the reasonableness of MOSAID's delay. See Symbol Techs., Inc.,
301 F. Supp. 2d at 1156 ("[U]nreasonable delay alone is
sufficient to apply prosecution laches without the requirement
that [the patentee] intended to gain some advantage by delay.").
In addition, the '703 patent appears to contain claims broader
than the earlier-issued Lines patents.*fn33 The '703 claims appear to be broader because,
unlike the earlier Lines patents, they do not require a
"latching" level shifter. As discussed earlier in this opinion,
the Court found that Infineon's accused products do not infringe
any asserted Lines claim that contains a "latching" limitation.
As a result, even though the accused products cannot infringe
many of the Lines patents, they may still infringe a patent that
issued thirteen years after the initial disclosure of this
invention to the public. Obviously, the potential prejudice to
the public, and Infineon, because MOSAID dropped a claim
limitation is profound.*fn34 At some point, the public is
"entitled to assume that what was not claimed [is] dedicated to
the public." Symbol Techs. Inc., 301 F. Supp. 2d at 1155-56. In
this case, whether a delay of more than twelve years extends
beyond that point will have to be determined at trial.
B. Inequitable Conduct
MOSAID moves for summary judgment that all of the Lines patents
are not unenforceable due to inequitable conduct. MOSAID argues
that it is entitled to summary judgment because: (1) there is no evidence of intent; and (2)
"infectious unenforceability" does not apply here.
"Inequitable conduct resides in the failure to disclose
material information, or submission of false material
information, with an intent to deceive, and those two elements,
materiality and intent, must be proven by clear and convincing
evidence." Kingsdown Consultants, Ltd. v. Hollister Inc.,
863 F.2d 867, 872 (Fed. Cir. 1988). "Once thresholds of materiality
and intent have been established, the court conducts a balancing
test and determines whether the scales tilt to a conclusion that
`inequitable conduct' occurred." Critikon, Inc. v. Becton
Dickinson Vascular Access, Inc., 120 F.3d 1253, 1256 (Fed. Cir.
1997). However, in order to get to the balancing test, some
evidence of materiality and intent must be proffered.
"To be guilty of inequitable conduct, one must have intended to
act inequitably." FMC Corp. v. Manitowoc Co., 835 F.2d 1411,
1415 (Fed. Cir. 1987). A "smoking gun" is not necessary to
establish an intent to deceive. Paragon Podiatry Lab., Inc. v.
KLM Labs., Inc., 984 F.2d 1182, 1189 (Fed. Cir. 1993). "Rather,
this element of inequitable conduct, must generally be inferred
from the facts and circumstances surrounding the applicant's
overall conduct." Id. at 1190.
To prove infectious unenforceability, an accused infringer must
establish two elements: (1) that a patent is unenforceable due to
inequitable conduct; and (2) that related patents bear an
immediate and necessary relation to that alleged inequitable
conduct. Arthrocare Corp. v. Smith & Nephew, Inc.,
310 F. Supp. 2d 638, 675 (D. Del. 2004).
Infineon alleges that MOSAID committed inequitable conduct in
prosecuting the Lines patents when its employees and agents
responsible for filing the Lines patents failed to disclose the prior art reference Fujii during the prosecution of the '602
patent application before the U.S. Patent & Trademark Office
("U.S. PTO"). As a result, Infineon alleges that the '602 patent
is unenforceable. As for the other Lines patents, the '253, '643,
'640, and '703 patents, Infineon argues that they are
unenforceable under the doctrine of "infectious unenforceability"
because they count the '602 patent application as part of their
The following facts are undisputed: Fujii is a highly material
reference. It was referred to in a footnote of the Lines
invention disclosure form, which was prepared by Peter Gillingham
with the assistance of Dr. Foss. That form was sent to Edward
Pascal, MOSAID's patent attorney, as the basis for filing a
patent application. Before forwarding that form to the attorney
prosecuting the patent application in the U.K., the country where
MOSAID had chosen to file its patent application first, Pascal
made some changes to the disclosure, including drawing lines
through the footnote that contained the reference to Fujii. At
that time, patent applicants were not required to disclose
material prior art, such as Fujii, to the U.K. patent office. The
U.K. patent attorney handling the matter excised the Fujii
footnote before filing the application with the U.K. patent
office. As a result, the U.K. application as filed did not refer
Pascal later took the U.K. application and submitted it to the
U.S. PTO in conjunction with the first Lines patent application
in order to obtain the U.K. application's earlier filing date.
The U.S. Lines application, like the U.K. application, did not
disclose Fujii. Pascal testified that Fujii was not disclosed to
the U.S. PTO due to what must have been a clerical error.
After the '602 patent issued, but while the continuation
application of the '602 patent application was still pending
before the U.S. PTO, Gillingham realized that Fujii had not been
disclosed. He then raised this fact with the new attorney
prosecuting the Lines application, Jim Smith. MOSAID then disclosed Fujii to the U.S. PTO in a June 1997
information disclosure statement ("IDS").
In October 1997, Valerie Lines, the inventor, Gillingham and
Smith spoke with the patent examiner about the Fujii reference.
The then-pending application was later allowed and issued as the
'253 patent, apparently without rejection over Fujii.
Subsequently, the Fujii article was cited in every continuation
and continuation-in-part application filed in the Lines patent
family, and the '643, '640 and '703 patents issued over it.
Infineon bears the burden of proving both materiality and
intent to deceive by clear and convincing evidence. Materiality
having been conceded by MOSAID, the issue on summary judgment is
whether Infineon has proffered sufficient evidence of deceptive
intent warranting denial of summary judgment. The Court concludes
that Infineon has not satisfied its burden.
Infineon argues that Pascal's explanation for failing to
include Fujii in the '602 patent application that it was due to
a clerical error is contradicted by a document found in his
patent file which states that Tibor Gold was responsible for
deleting the Fujii reference. Infineon however perceives a
contradiction by improperly comparing a file document describing
why Fujii was not disclosed in the U.K. application with
testimony concerning why Pascal did not disclose Fujii to the
U.S. PTO. Pascal's position appears to have always been that a
U.K. associate was responsible for not disclosing Fujii to the
U.K. patent office. Further, Infineon has not shown that Pascal's
explanation for failing to disclose Fujii to the U.S. PTO was
anything other than a clerical error. Thus, no contradiction
exists from which deceptive intent may be inferred.
Infineon also argues that MOSAID intentionally submitted the
U.K. application, which did not refer to Fujii, to the U.S. PTO.
But this fact, by itself, does not warrant an inference of deceptive intent. MOSAID intentionally submitted the U.K.
application to the U.S. PTO in order to gain the priority date of
the U.K. application. This act does not show an intent to
withhold Fujii. That would only be the case if Infineon had proof
that Fujii was intentionally removed from the U.K. application to
deceive the U.S. PTO, evidence that Infineon lacks.
In sum, Infineon provides no evidence from which this Court can
infer that removal of the Fujii citation was done in bad faith or
for any reason besides adherence to a U.K. patent prosecution
custom. Infineon provides no evidence that Fujii was purposely
withheld from the U.S. PTO or even that it was known by MOSAID
that Fujii had not been disclosed to the U.S. PTO in 1991.
Indeed, when MOSAID discovered that Fujii had not been put before
the patent examiner, it disclosed the reference to the U.S. PTO
in an IDS. Notably, the U.S. PTO then allowed four Lines patents
to issue over Fujii.
In conclusion, because there is no evidence of deceptive
intent, the '602 patent is not unenforceable. And because the
'602 is not unenforceable, the argument that other Lines patents
are unenforceable due to "infectious unenforceability" is
perforce rejected. Accordingly, summary judgment is granted in
favor of MOSAID on Infineon's inequitable conduct defense.
Infineon moves for partial summary judgment to limit potential
damages pursuant to 35 U.S.C. § 287(a). Under § 287(a), a
patentee has an obligation to provide notice to the public of a
patent's existence when it covers a product made by the patentee
or a licensee. Section 287(a) states in pertinent part: Patentees, and persons making, offering for sale, or
selling within the United States any patented article
for or under them, or importing any patented article
into the United States, may give notice to the public
that the same is patented . . . together with the
number of the patent. . . . In the event of failure
so to mark, no damages shall be recovered by the
patentee in any action for infringement, except on
proof that the infringer was notified of the
infringement and continued to infringe thereafter, in
which event damages may be recovered only for
infringement occurring after such notice. Filing of
an action for infringement shall constitute such
35 U.S.C. § 287(a).
Thus, notice may be provided in two ways. The patentee may
provide constructive notice by marking the patentee's products,
including any licensee's products, with the patent numbers. Or,
in the absence of constructive notice, the patentee may provide
actual notice of infringement. Actual notice can take many forms,
including sending a potential infringer a letter that charges a
particular product with infringement of a specific patent or
filing a patent infringement action. See, e.g., SRI Int'l, Inc.
v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1470 (Fed. Cir.
1997) ("Although there are numerous possible variations in form
and content, the purpose of the actual notice requirement is met
when the recipient is notified, with sufficient specificity, that
the patent holder believes that the recipient of the notice may
be an infringer."). Compliance with the notice provision is a
question of fact. Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111
(Fed. Cir. 1996).
Here, there is no dispute that neither MOSAID nor its licensees
marked DRAMs with the numbers of the patents in suit.
Consequently, MOSAID's damages are limited by when, and to what
extent it provided Infineon with actual notice that its DRAMs
infringe the patents in suit. MOSAID first provided Infineon with actual notice of
infringement on November 4, 1999. Therefore, the earliest
possible date upon which MOSAID can collect damages for
infringement of any of the patents in suit is November 4, 1999.
However, Infineon takes issue with the sufficiency of the
November 4, 1999 letter, arguing that it only identified a single
DRAM product. Infineon further argues that over the next three
years, and before the lawsuit was filed, MOSAID only identified
two more particular DRAM products. Thus, Infineon requests that
the Court limit MOSAID's pre-lawsuit damages to those three DRAM
MOSAID contends that the November 4, 1999 letter adequately
charged all of Infineon's DRAMs with infringement and therefore
it is entitled to damages arising from all of the asserted
products beginning on November 4, 1999. The November 4, 1999
letter states in relevant part:
In the process of reviewing the various patents
contained in the MOSAID portfolio, we have reached
the conclusion that there are a wide variety of
patents in the portfolio for which Infineon may be
interested in obtaining a license. Based on the
results of our review, and considering the fact that
Infineon is one of the world's largest manufacturers
of DRAMs, it is our firm belief that Infineon
currently needs to acquire a license under at least
the following patents, which have to do with
semiconductor memory circuits, and DRAMS in
[U.S. Patent Nos. 5,214,602, 5,406,523, 5,751,643,
5,822,253, and 5,828,620.]
Furthermore, I have enclosed with this letter
detailed patent claims analyses prepared by
Chipworks, an independent firm, based on reverse
engineering of the Siemens HYB39S64800AT-8 2M × 8 ×
4 (64M) SDRAM and the following claims;
United States Patent Number 5,822,253, claim 1,
United States Patent Number 5,822,253, claim 15,
United States Patent Number 5,828,620, claim 1,
* * * We are of the opinion that Infineon, either now, or
some time over the months and years ahead, is already
in need of, or will, in the future, be in need of, a
license under a number of the various US and foreign
patents enumerated in the attached document. In fact,
we very strongly believe that Infineon, through its
worldwide manufacture and sale of DRAMs, is either
now infringing, or will be infringing in the future,
some of the [63 U.S.] patents enumerated in the
(Nov. 4, 1999 Letter from Peter Gillingham of MOSAID to Roland
Rehlander of Infineon, bold in original).
Both parties seize on different sections of the letter as
quoted above to support their argument. Infineon contends that
the bold portion is the only relevant portion for actual notice
purposes because it alleges that a particular product, the
HYB39S64800AT-8 DRAM, infringes specific patent claims. MOSAID
disagrees, contending that even though its letter did not
identify every possible infringing device, its letter accused
Infineon's DRAMs and DRAM products of infringing the '253, '620,
'643, '201 and '640 patents.
Section 287(a) is structured to encourage patentees to mark
their products, i.e., to provide constructive notice. If
patentees mark their products, they put the world on notice of
the patent's existence and, generally speaking, may acquire
damages for all infringing products from the date marking began.
However, if patentees choose to forego marking their products,
the statute penalizes patentees by imposing the duty to provide
actual notice to each person infringing the patents before they
can collect damages. This duty is more onerous than merely
marking one's products because "[a]ctual notice requires the
affirmative communication of a specific charge of infringement
by a specific accused product or device." Amsted Indus. Inc.
v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994)
(emphasis added). Morever, the focus remains on the "actions of the patentee, not the knowledge or
understanding of the infringer." Id. In other words, patentees
must do more than provide general advice not to infringe a
In Amsted, the question before the Federal Circuit was
whether a particular letter qualified as proper notice under §
287. That letter stated:
This is to advise you that Amsted . . . has acquired
a number of properties [from Dresser] . . . including
[the '269 patent]. . . .
It is our understanding that Dresser Industries
actively sought to enforce its patent . . . and those
rights have been heretofore respected in the
industry. AMSTED-ASF expects to continue to enforce
those rights which it has acquired and similarly
expects our industry to respect its patents.
Accordingly, you should acquaint yourself with the
['269 patent] and refrain from supplying or offering
to supply component parts which would infringe or
contribute to the infringement of the patent?. You
should not offer to supply items which are copies of
or designed to replace our LOW PROFILE center plate.
Id. at 186. The Federal Circuit characterized that letter as
"merely informational," rather than as a specific charge of
infringement. Id. at 186-87. The court concluded "as a matter
of law that the 1986 letter, which notified the whole industry,
including Buckeye, only of Amsted's ownership of the patent and
generally advised companies not to infringe, was not notice
within the meaning of section 287." Id. at 187.
Here, the problem with MOSAID's argument that the November 4,
1999 letter apprised Infineon that all of its DRAMs infringed
five of MOSAID's patents is that the first and last paragraphs
of the excerpt above upon which MOSAID relies to demonstrate
proper notice do not specifically charge any product with
infringement of any patent. Rather, those sections of the letter
resemble the informational content of the letter in Amsted.
They offer nothing more than general advice that Infineon should
acquaint itself with MOSAID's "various US and foreign patents." Consequently, the Court does not believe that MOSAID's
letter provided the "sufficient specificity"*fn35 needed to
place Infineon on notice that any product other than the one
identified infringes any of MOSAID's patents.
Moreover, MOSAID's actions after November 4, 1999 support this
conclusion. Subsequent, pre-lawsuit communications from MOSAID to
Infineon limited accusations of infringement to a total of three
products. On August 1, 2000, MOSAID sent Infineon additional
claims analyses regarding the HYB39S64800AT-8 DRAM, alleging that
it infringed not only the '253 and '620 patents, but the '643
patent as well. On July 17, 2001, MOSAID sent Infineon a letter
that included a chart specifically accusing a second product,
Infineon's 256 SDRAM, HYB39S256800AT-8, of infringing the '201
patent. MOSAID confirmed that it was accusing only two products
of infringing MOSAID patents in March 2002, when both companies
met to discuss possible licensing opportunities and MOSAID
identified only the two previously named accused products during
a PowerPoint presentation.
Finally, at a May 29, 2002 meeting between the companies,
MOSAID accused a third product, the MediaQ MQ-200 Graphics
Controller HYP90MQARO, of infringing the '640 patent. Indeed, it
was not until November 2003, nine months after MOSAID filed its
infringement counterclaims and approximately four years after the
first actual notice of infringement, that MOSAID for the first
time accused twenty-five other products of infringing MOSAID's
Because MOSAID specifically accused only three DRAM products of
infringement before February 7, 2003, the date it filed its
infringement claims, MOSAID may only seek presuit damages for those three products as of the dates MOSAID notified
Infineon that they infringed specific patents. MOSAID notified
Infineon that its HYB39S64800AT-8 DRAM allegedly infringes the
'253 and '640 patents on November 4, 1999 and the '643 patent on
August 1, 2000; MOSAID notified Infineon that its
HYB39S256800AT-8 SDRAM allegedly infringes the '201 patent on
July 17, 2001; and MOSAID notified Infineon that its MediaQ
MQ-200 Graphics Controller HYP90MQARO allegedly infringes the
'640 patent on May 29, 2002. It follows as a corollary that
MOSAID may not seek damages for any asserted infringement of any
other patent by those three products before February 7, 2003.
Further, MOSAID may not seek damages for any asserted
infringement of the '253, '643, '640, '620 and '201 patents by
Infineon's other accused products before February 7, 2003, since
they were never identified by MOSAID in any notice provided to
Lastly, MOSAID accused Infineon of infringing the '703 and '654
patents for the first time in October 10, 2003 when it filed its
Third Amended Counterclaims. MOSAID does not dispute that this is
the first actual notice of these patents provided to Infineon. As
a result, MOSAID may not seek damages concerning the '654 patent
before October 10, 2003. The '703 patent, however, has a
different notice date. The '703 patent is directed to only method
claims. Under Federal Circuit precedent, a methods-only patent
need not comply with § 287(a). American Med. Sys., Inc. v. Med.
Eng'g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993). Consequently,
MOSAID may seek damages for any asserted infringement of the '703
patent on or after its date of issuance, August 5, 2003. V. MOTION TO STRIKE
MOSAID filed a motion to strike the Rebuttal Expert Report of
Joseph McAlexander Regarding Non-Infringement of MOSAID Patents,
and those portions of Infineon's opposition brief that rely on
this report. MOSAID alleges that the complete report should be
stricken because it contains opinions regarding Infineon's
noninfringement contentions which were never provided to MOSAID
during discovery. MOSAID asserts that these contentions should
have been disclosed in response to one of MOSAID's contention
interrogatories. Because they were not, MOSAID seeks to preclude
Infineon from being able to rely on them. In the alternative,
MOSAID requests leave to supplement the infringement expert
report of David Taylor through the Declaration of David Taylor,
which provides new doctrine of equivalents analyses.
There are several significant problems with MOSAID's motion.
MOSAID as the patentee bears the burden of proof on infringement.
The Court's October 1, 2004 scheduling order only allowed for two
rounds of expert reports: affirmative and rebuttal reports.
MOSAID served its Taylor infringement report on that date.
Although that report could have contained opinions stating
particular and specific reasons why Infineon's accused products
infringe under the doctrine of equivalents, it did not. Instead,
it provided conclusory statements that if the products did not
literally infringe, they infringe under the doctrine of
equivalents. The fault for not supplying a more detailed expert
report lies with MOSAID. It knew that it would only get one bite
of the apple, and it chose to forego any substantive doctrine of
During the status conference in which the Court discussed with
the parties the schedule for expert discovery, the Court asked
the parties if they had any comments. MOSAID did not have any.
MOSAID did not complain at that point that Infineon had not
provided a response to a contention interrogatory. Nor did it ask for a reply round of
expert reports. Instead, all parties accepted the Court's
two-round expert report schedule without comment or complaint.
McAlexander's report was timely filed pursuant to the Court's
October 1, 2004 scheduling order. When it was served on MOSAID,
they did not object. Instead, two weeks later, and without the
Court's permission, MOSAID sought belatedly to serve two expert
reports on Infineon. Infineon moved immediately to strike those
reports for noncompliance with the Court's October 1, 2004 order.
The Court struck them, reaffirming its commitment to the case
schedule it had established.
MOSAID's motion to strike is another attempt to circumvent the
October 1, 2004 order. MOSAID seeks to either strike the
McAlexander report, or to be allowed to file an expert
declaration supplementing its expert's positions on infringement.
But MOSAID made a tactical decision when it filed an affirmative
expert report with conclusory doctrine of equivalents analyses.
See Section I.D., supra (discussing the inadequacy of
MOSAID's initial doctrine of equivalents analyses). In doing so,
it took a risk that the Court would not allow any further
supplementation based on the October 1 order. That risk has
become a reality, and as before, MOSAID's attempt to interject an
expert's opinion after the time allowed is denied.
Accordingly, MOSAID's motion to strike the McAlexander
noninfringement expert report is denied. And, because the Court
has stricken the Declaration of David Taylor, see section I.D.,
supra, MOSAID's request for alternative relief is likewise
For the aforementioned reasons, the parties' summary judgment
motions are granted-inpart and denied-in-part, and MOSAID's
motion to strike is denied in its entirety.