Opinion
Case No. C 00-1030 SI
July 29, 2003
ORDER DENYING PLAINTIFFS' MOTION FOR JUDGMENT AS A MATTER OF LAW RE: VALIDITY OF THE `827 PATENT, AND DENYING PLAINTIFFS' MOTIONS FOR A NEW TRIAL
Now before the Court are plaintiffs' motions for judgment as a matter of law regarding the validity of the `827 patent, and plaintiffs' motions for a new trial. This Court finds the motions appropriate for determination without oral argument in accordance with Local Rule 7-l(b). Having carefully considered the argument in the papers submitted, the Court DENIES plaintiffs' motion for judgment as a matter of law regarding the validity of the `827 patent, DENIES the motion for a new trial regarding damages for infringement of the `827 patent, and DENIES the motion for a new trial regarding the validity of the `827 patent.
BACKGROUND
On July 21, 1999, plaintiff Mentor Graphics Corporation ("Mentor") filed suit against Quickturn Design Systems, Inc. and Cadence Design Systems, Inc. (collectively "Quickturn"), asserting infringement of,inter alia, U.S. Patent No. 5,754,827 ("the `827 patent"). The action was consolidated for discovery with several other actions, which together concerned six U.S. patents issued to French inventors Jean Barbier, Frederic Reblewski, and Olivier Lepape. Among the claims in the consolidated action were defendants' counterclaims seeking declaratory judgments that defendants did not infringe plaintiff's patents and that plaintiff's patents were invalid. The Court held a Markman hearing on February 22, 2002 regarding the construction of the patents at issue in the consolidated actions, and a Claim Construction Order was issued on April 26, 2002.
Some of the claims were resolved via summary judgment, while others were left for trial. On August 6, 2002, the Court granted summary judgment to the plaintiff on the issue of infringement of the claim in this motion. In the order, the Court found that, as a matter of law, Quickturn's Mercury and MercuryPlus Design Verification Systems ("Mercury" and "Mercury Plus") literally infringed Claim 1 of the `827 patent. Defendants' counterclaim for invalidity remained, and the question of the validity of the patent was left for trial.
On January 3, 2003, a jury trial commenced concerning validity of the `827 patent claim, and issues of infringement and validity of two other patents. The jury reached a verdict on February 19, 2003, in which it found that Claim 1 of the'827 patent was invalid by reason of: 1) anticipation by prior art, both before the U.S. conception date and under the statutory bar; 2) obviousness in light of prior art, both before the U.S. conception date and under the statutory bar; and 3) lack of adequate written description. Jury Verdict, Questions 9-11.
Now before the Court is plaintiff's renewed motion for judgment as a matter of law regarding the validity of claim 1 of the `827 patent and motion for a new trial ("Plaintiff's Renewed Motion"). Plaintiff requests: 1) judgment as a matter of law that claim 1 of the `827 patent is valid over any claims of anticipation, obviousness, or failure to satisfy the written description requirement; 2) a new trial concerning damages arising from the Court's finding of infringement of claim 1 of the `827 patent; and 3) alternatively, a new trial regarding the validity of the patents in question, as well as damages, on the grounds that the jury's verdict of invalidity is against the clear weight of the evidence. Pl.'s Renewed Mot., at 1.
LEGAL STANDARDS
I. Judgment as a Matter of Law and Motion for a New Trial A. Renewed Motions for Judgment as a Matter of Law (FRCP 50(b))
A motion for judgment as a matter of law involves the same inquiry as a motion for summary judgment, albeit at a later stage of the proceeding.Lies v. Farrell Lines, Inc., 641 F.2d 765, 772 (9th Cir. 1981). The Court may grant judgment as a matter of law, "if during a trial by jury a party has been fully heard on an issue and there is no legally sufficient evidentiary basis for a reasonable jury to find for that party on that issue." Fed.R.Civ.P. 50(a)(1). In making this determination, the Court may not weigh evidence, evaluate the credibility of witnesses, or substitute its judgment for that of the jury on any specific factual issue merely because it believes its judgment to be more reasonable.See Loricchio v. Legal Servs. Corp., 833 F.2d 1352, 1356 (9th Cir. 1987); Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987), cert. denied, 108 S.Ct. 95 (1987). Instead, while drawing all inferences in favor of the non-moving party, the Court must determine whether there is relevant evidence sufficient to permit reasonable minds to reach the jury's verdict. Landes Constr. Co., Inc. v. Royal Bank of Canada, 833 F.2d 1365, 1371 (9th Cir. 1987) (citation omitted). "A JNOV is proper if the evidence, construed in the light most favorable to the non-moving party, permits only one reasonable conclusion, and that conclusion is contrary to the jury's."Vollrath Co. v. Sammi Corp., 9 F.3d 1455, 1460 (9th Cir. 1993),cert. denied, 511 U.S. 1142, 114 S.Ct. 2163 (1994).
Motions for judgment as a matter of law may be made at any time before submission of the case to the jury. Fed.R.Civ.P. 50(a)(2). If the Court does not grant a motion for judgment as a matter of law made at the close of all evidence, "the movant may renew its request for judgment as a matter of law by filing a motion no later than 10 days after entry of judgment — and may alternatively request a new trial or join a motion for a new trial under Rule 59." Fed.R.Civ.P. 50(b).
B. Motion for a New Trial (FRCP 59)
A motion for new trial may invoke the court's discretion insofar as it is based on claims that "the verdict is against the weight of the evidence, that the damages are excessive, or that, for other reasons, the trial was not fair to party moving; and may raise questions of law arising out of alleged substantial errors in admission or rejection of evidence or instructions to the jury." Montgomery Ward Co. v. Duncan, 311 U.S. 243, 251, 61 S.Ct. 189, 194 (1940). Where a movant claims that a verdict is against the clear weight of the evidence, a new trial should be granted where, after giving full respect to the jury's findings, the judge "is left with the definite and firm conviction that a mistake has been committed" by the jury. Landes Const. Co., Inc. v. Royal Bank of Canada, 833 F.2d 1365, 1371-72 (9th Cir. 1987).
II. Validity of Patents
A. Generally
In district court, a party may challenge the validity of a patent in two ways: 1) by raising a claim or counterclaim seeking a declaratory judgment that the patent is invalid, or 2) raising invalidity of a patent as an affirmative defense to a claim of infringement. See, e.g. Cardinal Chem. Co. v. Morton Int'l Inc., 508 U.S. 83, 93, 113 S.Ct. 1967, 1973 (1992); see also Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1360 (Fed. Cir. 2001), cert. denied, 123 S.Ct. 90 (2002); 35 U.S.C. § 282. A party seeking to invalidate a patent must overcome a presumption that the patent is valid. 35 U.S.C. § 282;United States Gypsum Co. v. National Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1375 (Fed. Cir. 1986). This presumption places the burden on the challenging party to prove the patent's invalidity by clear and convincing evidence. United States Gypsum Co., 74 F.3d at 1212. The challenging party's burden also includes overcoming deference to the PTO's findings and decisions in prosecuting the patent application. Deference to the PTO is due "[w]hen no prior art other than that which was considered by the PTO examiner is relied on by the attacker." American Hoist Derrick Co. v. Sowa Sons, 725 F.2d 1350, 1359 (Fed. Cir. 1984), cert. denied, 469 U.S. 821. Conversely, no such deference is due when the party challenging the patent raises prior art or evidence that was not considered by the PTO in its decision and evaluation of the patent application:
When an attacker simply goes over the same ground traveled by the PTO, part of the burden is to show that the PTO was wrong in its decision to grant the patent. When new evidence touching validity of the patent not considered by the PTO is relied on, the tribunal considering it is not faced with having to disagree with the PTO or with deferring to its judgment or with taking its expertise into account.Id at 1360 (emphasis in original).
B. Invalidity Due to Anticipation by Prior Art — 35 U.S.C. § 102
Anticipation is a factual issue tested in accordance with 35 U.S.C. § 102. See Hybritech, supra, 802 F.2d at 1379; Texas Instruments v. United States ITC, 988 F.2d 1165, 1177 (Fed Cir. 1993). An accused infringer demonstrates that a patent claim is "anticipated," and therefore invalid, if each and every limitation is found either expressly or inherently in a single prior art reference.Celeritas Technologies Ltd, v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998), cert. denied 525 U.S. 1106 (1999). "An element is inherent if it is a natural result flowing from the operation as taught." In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Inherent anticipation arises if disclosure of a claim in prior art "would be appreciated by one of ordinary skill in the art." Glaxo, Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir. 1995).
C. Invalidity Due to Obviousness — 35 U.S.C. § 103
The statutory standard for the ultimate determination of obviousness provides that a claimed invention is unpatentable if the differences between it and the prior art "are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. § 103; Brown Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir. 2000). Obviousness is a legal conclusion, "including underlying factual inquiries such as: (1) the-scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness." Id. A showing of obviousness requires a motivation or suggestion to combine or modify prior art references, coupled with a reasonable expectation of success.Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1354 (Fed. Cir. 2003). Obviousness, like any other ground of invalidity, must be established by clear and convincing evidence.Id., at 1353.
D. Invalidity for Failure to Satisfy the Written Description Requirement — 35 U.S.C. § 112 The written description requirement is contained in 35 U.S.C. § 112, which states: `The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use [the invention]." The requirement serves "to ensure that the inventor had possession, as of the filing date of the application relied on, of the specific subject matter later claimed by him." In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262 (C.C.P.A. 1976)). Whether the specification for a challenged claim meets this requirement is a question of fact to be assessed on a case-by-case basis. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561, 1563 (Fed. Cir. 1991); Eli Lilly Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997).
DISCUSSION
I. Motion for JNOV re: Validity
The jury found that claim 1 of the `827 patent was invalid due to anticipation by prior art, obviousness, and failure to satisfy the written description requirement. Jury Verdict, Questions 9-11. Any one of these bases, if supported by the evidence, would be sufficient to invalidate the patent. To prove anticipation and obviousness, the defendants presented references to four prior art devices. The plaintiffs' motion alleges that this proof was insufficient as a matter of law because the evidence showed that none of the prior art references contained the "clock cycle by clock cycle" and "deterministic local topology" limitations of claim 1 of the `827 patent. Pls.' Renewed Mot., at 2. The plaintiffs also argue that the Meta-128 chip and the Teramac machine were ineligible for consideration by the jury as prior art. Pls.' Renewed Mot., at 3. Finally, the plaintiffs argue that the defendants' evidence and arguments at trial regarding the written description requirement were irrelevant and based on a misconception of the patent law on the written description requirement. Pls.' Renewed Mot., at 3-4, 21. The defendants' opposition basically mirrors the plaintiffs' motion, responding in the negative to each of the plaintiffs' allegations of insufficiency, and adding the additional contention that the Court should not consider the plaintiffs' motion because the plaintiffs failed to file any pre-verdict JMOL motions on the same grounds. Defs.' Opp'n, at 2-3. The Court addresses each of the grounds for invalidity in turn.
Claim 1 of the `827 patent reads as follows:
1. An apparatus comprising:
a plurality of field programmable gate arrays (FPGAs) for emulating at least a subset of a circuit design, each field programmable gate array being a single integrated circuit comprising both a plurality of logic element (LEs) for realizing circuit elements of the at least a subset of the circuit design and a first on-chip integrated debugging facility for outputting signal state values of the LEs on a clock cycle by clock cycle basis; and
trace memory coupled to the FPGAs comprising a plurality of memory locations for capturing and storing the LE signal state values output in a deterministic locality topology, under which the relative memory location within a clock cycle of trace data where the signal state value of a circuit element is stored is predeterminable.
U.S. Patent No. 5,754,827, at Cols. 8-9 (emphasis added). In the Claim Construction order, the Court construed various parts of these claims, including the "clock cycle by clock cycle basis" and "deterministic locality topology" limitations emphasized in the plaintiffs' motion. Claim Construction Order, at 16-18. The Court's construction of these terms is cited below where relevant.
A. Anticipation by Prior Art
1. Hewlett-Packard's "Teramac" Machine
The defendants argued at trial that Hewlett-Packard's Teramac machine was anticipating prior art to claim 1 of the `827 patent. The plaintiffs' motion alleges that the defendants' evidence was insufficient as a matter of law to prove anticipation and that the evidence at trial showed conclusively that the Teramac was not available as prior art because it had been concealed by its inventors as of the invention date of the `827 patent. See Pls.' Renewed Mot., at 13-17, 19.
When a defendant in an infringement action challenges the validity of a patent under Section 102(g) it must first prove by clear and convincing evidence that "the invention was made in this country by another inventor." Apotex USA, Inc. v. Merck Co., 254 F.3d 1031, 1037-38 (Fed. Cir. 2001) (citing 35 U.S.C. § 102(g)). If the plaintiff raises a triable question of fact that the invention may have been suppressed or concealed, the defendant must also rebut this presumption with clear and convincing evidence. See id., at 1038. Accordingly, the Court addresses the issue of whether the Teramac anticipates claim 1 before turning to the question of whether or not it was "concealed, suppressed or abandoned."
a. Anticipation of Claim 1 of the `827 patent
As noted above, a patent claim is "anticipated" if each and every limitation is found either expressly or inherently in a single prior art reference. Celeritas, supra, 150 F.3d at 1361. The plaintiffs' motion argues that the evidence at trial failed to show that the Teramac contained the claim limitations of: 1) outputting LE signal state values on a "clock cycle by clock cycle" basis, 2) a "deterministic locality topology," or 3) "trace memory" as described in claim 1. See Pls.' Renewed Mot., at 13-17.
To show that the Teramac anticipates claim 1 of the `827 patent, the defendants presented the testimony of Mr. Snider, Dr. Hutchings, and Dr. Hauck. Mr. Snider was the "lead architect, chief compiler designer and implementer" of the Teramac; Dr. Hutchings is a Brigham Young University professor who used the Teramac and taught a class on it; and Dr. Hauck is another professor. See Defs.' Opp'n, at 10; Tr., at 1876:20-21 (stating Snider's title); Tr., at 1781-85 (describing Dr. Hutchings' experience with the Teramac). The evidence at trial regarding each of the claim limitations is discussed below.
(1) "Clock Cycle By Clock Cycle" Limitation
The jury was instructed that "[t]he term `clock cycle by clock cycle basis' in claim 1 means that `the debugging facility can collect signal state data continuously, i.e., for every cycle of the user clock.'" Jury Instructions, at 54; See Claim Construction Order, at 16-17. The plaintiffs argue that the evidence showed conclusively that the Teramac's operation of outputting scan data required stopping the logic clock, which could not be considered "continuous." Pl.s.' Renewed Mot., at 13-15. To support this contentiorv the plaintiffs cite to testimony of, inter alia, defendants' witness Mr. Snider, who stated that some modes of operation of the Teramac required either stopping and starting the logic clock or automatically "single-stepping" the logic clock, which is essentially the same thing. See Pls.' Reply, at 10-11. The defendants note that Drs. Hauck and Hutchings testified that there were multiple modes of operation of the Teramac that could collect signal state data "continuously," as the Court's claim construction required. See Defs.' Opp'n, at 10-12. Although the plaintiffs were able to impeach parts of Mr. Snider's testimony, their cross-examination of Mr. Snider did not leave the jury without a sufficient evidentiary basis for finding that the Teramac contained the "clock cycle by clock cycle" limitation of the patent claim. The plaintiffs' contention that the defendants' evidence was in conflict with the plaintiff's evidence is immaterial to this conclusion.See Pl.s.' Reply, at 11 ("Dr. Hatchings', Dr. Hauck's, and Mr. Snider's `clock cycle' trial testimony is in conflict with substantial evidence on Teramac.").
(2) "Deterministic Locality Topology" Limitation
The jury was instructed that "[t]he term `deterministic locality topology' in claim 1 is `a topology in which `the relative memory location within a clock cycle of trace data where the signal state value of the value of a circuit element is stored is predeterminable.'" Jury Instructions, at 54; See Claim Construction Order, at 17-18.
The jury was also instructed that
"[t]he term `predeterminable' in claim 1 means `determinable before the compiled circuit design is run on the emulation system, but not necessarily before the circuit design is mapped into the LEs of the emulator' where the term `determinable' includes `an ability to predict an outcome' and the term `run' means that `the downloaded circuit is responding to at least a clock signal, if not a clock and a trace signal.'"
Jury Instructions, at 54; See Claim Construction Order, at 17-18. The plaintiffs argue in their motion that the defendants' evidence offered on this limitation was inconsistent with the Court's claim construction and otherwise irrelevant because it incorrectly referred to LE signals instead of circuit elements from the user's design.See Pl.s.' Renewed Mot., at 16. Both the plaintiffs' motion and their reply confine themselves almost exclusively to alleged inadequacies in Dr. Hauck's testimony and qualifications in this respect.See Pl.s.' Renewed Mot., at 16; Pl.s.' Reply, at 10. The defendants properly note that they also offered the testimony of Dr. Hatchings and Mr. Snider. See Defs.' Opp'n, at 12. As stated above, Dr. Hutchings used the Teramac and taught a class on it at Brigham Young University, and Mr. Snider was the "lead architect" of the Teramac. Both testified that the Teramac met the "deterministic locality topology" limitation and supported their opinions with the Court's claim construction and by describing how the Teramac works. See id, Tr., at 1-806, 1882-3. The Court therefore finds that the evidence at trial provided a sufficient basis for a finding that the Teramac contained the "deterministic locality topology" limitation.
(3) Trace Memory Limitation
Finally, the plaintiffs assert that the defendants offered no evidence whatsoever that the Teramac contains "trace memory" as described in claim 1. See Pl.s.' Renewed Mot., at 17. They note that Dr. Hauck admitted that he did not know how the Teramac's trace memory worked, and then point to the testimony of their own expert Dr. Breuer, who testified that the Teramac did not contain trace memory as described in claim 1. Id. The plaintiffs' contention that the defendants offered no evidence is contradicted by the trial record. The defendants note that Dr. Hatchings and Mr. Snider also testified regarding the Teramac's trace memory. Defs.' Opp'n, at 13. As they did with the other claim limitations, Dr. Hutchings and Mr. Snider supported their testimony with descriptions of how the Teramac actually worked. See Defs.' Opp'n, at 13; Tr., at 1805, 2367 (attached to Ward Decl.); Defs.' Tr. Ex.4175 (attached to Ward Decl.) — The jury had the Court's claim construction and the language of the claims to compare with their testimony, and the plaintiffs do not dispute Dr. Hulchings' and Mr. Snider's familiarity with the Teramac. For the foregoing reasons, the Court finds that the evidence at trial provided a sufficient evidentiary basis for a reasonable juror to find that the Teramac contained all of the limitations of claim 1 of the `827 patent and therefore anticipated claim 1. The Court now turns to the question of whether the Teramac was available as prior art.
b. Availability as Prior Art
The plaintiffs assert in their motion that the Teramac was not prior art because it was concealed from the public until after the invention date of the `827 patent. Under 35 U.S.C. § 102 (g), an inventor may not receive a patent if "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). See Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) ("Conception must be proved by corroborating evidence which shows that the inventor disclosed to others his `completed thought expressed in such clear terms as to enable those skilled in the art' to make the invention."). Absent a satisfactory explanation or the presence of other mitigating facts, a prior invention will therefore be deemed suppressed or concealed within the meaning of § 102(g) "if, within a reasonable time after completion, no steps are taken to make the invention publicly known." Apotex. supra, 254 F.3d at 1039 (citing Int'l Glass Co. v. United States, 408 F.2d 395, 403 (Ct.Cl. 1969)).
The filing date of the `827 patent is October 13, 1995, and the plaintiffs asserted that the U.S. invention date was as early as September 1995. Pls.' Renewed Mot., at 19. As evidence that the Teramac had been concealed from the public, the plaintiffs presented a confidentiality agreement between Dr. Hutchings, a Brigham Young University professor who ordered and used the Teramac, and Hewlett-Packard. Pls.' Mot., at 19; Pls.' Ex. 262 (attached to Fenwick Decl).
As evidence at trial that the Teramac had not been concealed from the public prior to the invention date, the defendants presented the testimony of Dr. Hutchings, who stated that he learned about the Teramac at a public conference in April of 1995, met with Hewlett-Packard employees for a demonstration of the product during the summer of 1995, and had a Teramac machine shipped to the university in November of 1995. Tr., at 1782 — 1783 (attached to Ward Decl.). Dr. Hutchings further testified that the confidentiality agreement was limited in scope to technology that was not relevant to this case. Tr., at 1786:14 — 1787:1 (attached to Ward Decl.). The defendants also presented two papers describing the Teramac that were presented, respectively, at an IEEE symposium in April of 1995, and at a workshop in the United Kingdom from August 29 to September 1 of 1995, as well as three other publications describing the Teramac that were produced after the claimed invention date.
The Court concludes that a reasonable juror could find that Hewlett-Packard's presentations at public conferences and its demonstration for Dr. Hutchings were clear and convincing evidence that Hewlett-Packard took steps to make its invention known to the public, and therefore did not conceal the invention for the purposes of Section 102(g).
2. Mentor's Meta Emulation System
The defendants argued that Mentor's Meta emulation system was described in a printed publication in France more than one year before Mentor applied for a patent, and that the Meta emulation system contained all of the technology covered by the `827 patent/ Defs.' Opp'n, at 4-9. A vital component at the center of the emulation system described is the Meta-128 chip, an FPGA that the Court ruled was "on sale" in the United States in 1992. The defendants argued at trial that an article published in Electronique magazine in France in 1994 fully disclosed all elements of claim 1 of the `827 Patent, because it disclosed in enabling detail the additional claim elements that were not present in the Meta-128 chip alone, as sold in 1992. See Defs.' Opp'n, at 9.
In an order dated May 20, 2002, the Court ruled that Meta's 1992 purchase of Meta-128 chips from Orbit triggered the on-sale bar to patentability. See Order Denying Defendants' Motion of Summary Judgment of Invalidity of the Barbier `832 and `725 Patents; and Granting Defendants' Motion for Summary Judgment of Invalidity of the Barbier `388 and `706 Patents, at 16.
The defendants supported their argument with the testimony of Drs. Kean and Hauck, the testimony of a Mr. Snider, the Electronique article, Meta's product literature, a report based on a reverse engineering of the Meta-128 chip, and Mentor's interrogatory responses.See Tr., at 2357-2365 (testimony of Dr Hauck, attached to Ward Decl.); Defs.' Trial Ex. 611 (Meta-128 literature, attached to Ward Decl.); Defs.' Trial Ex. 1504 ( Electronique article, attached to Ward Decl.); Defs.' Trial Ex. 1181 (schematics, attached to Ward Decl.) The plaintiffs argue that the evidence was insufficient as a matter of law because: 1) the Court's prior ruling that the Meta-128 chip was "on sale" for the purposes of 35 U.S.C. § 102 was incorrect, 2) the defendants' evidence and arguments regarding the Meta-128 were based on a claim construction rejected by the Court at the Markman hearing, and 3) it remained unproven that certain limitations in the claim were present in the Meta-128 chip. Pls.' Renewed Mot., at 11 — 12. The plaintiffs also argue that the evidence at trial showed that the Electronique article was too general to have adequately disclosed all elements of the patent claim. Id. The Court declines to disturb its prior ruling. The evidence is briefly discussed below.
Mentor stated, in an interrogatory response, that "[t]he Meta 128, as of September 1992, contained all the on-chip crossbar, trace and trigger, and memory emulation structure and functionality claimed in the `388, `489, `706, and `827 patents." Ward Decl., Ex. B; Mentor's Supplemental Responses to Defs.' Interrogatories, at 6. The plaintiffs emphasize that they only admitted that the Meta-128 chip contained certain "on-chip" features, and argue that the interrogatory response does not cover certain other claim limitations, in particular the "clock cycle by clock cycle" limitation, the "deterministic locality topology" limitation, and the trace memory coupled to the FPGA. Each limitation is addressed below.
a. "Clock Cycle by Clock Cycle"
The Court's claim construction of this claim limitation is noted above. The plaintiffs argue that "[t]he Meta-128 chip by itself does not meet the `clock cycle by clock cycle basis' because the Meta-128 chip by itself does not contain or disclose the coordinated clock scheme required for `clock cycle by clock cycle' debugging." Pls.' Renewed Mot., at 9. The Court notes that while the interrogatory responses did not admit to any "off-chip" technology being on the Meta-128, the "clock cycle by clock cycle basis" limitation is part of an "on-chip" function, by the plain language of the patent. The first paragraph of claim 1 includes "a first on-chip integrated debugging facility for outputting signal state values of the LEs on a clock cycle by clock cycle basis.' `827 patent, Col. 8:62-64 (emphasis added). While Mentor insists that something more is necessary, neither the language of the patent claim nor the Court's claim construction supports this contention. The interrogatory response alone is a sufficient evidentiary basis for finding that the "clock cycle by clock cycle" limitation was present in the Meta-128 chips sold in 1992, and Dr. Hauck's testimony on this point provided further support. The Court therefore rejects the plaintiffs' contention that the evidence at trial was insufficient to support a finding that the Meta-128 chip contained the "clock cycle by clock cycle" limitation.
b. "Deterministic Locality Topology" and "Trace Memory Coupled to the FPGAs"
"Deterministic locality topology" was a phrase in the second paragraph of the patent claim, describing the "trace memory coupled to the FPGAs." `827 Patent, at Col.9: . . l-2. The plaintiffs argue that the defendants did not meet their burden of proof in showing that the Meta-128 chip contained this limitation. See Pls.' Renewed Mot., at 10. The Court's construction of this term is described above, and "trace memory coupled to the FPGA" was not a part of the claim construction order. Both of these claim limitations come from the second paragraph of the claim. `827 Patent, at Cols. 8-9. Although the "deterministic locality topology" describes the arrangement of the data in memory, a function of the memory, the defendants presented evidence at trial to the effect that this function is achieved by the way in which the Meta-128 chip arranges the data when it outputs it to the memory. The defendants point to the testimony of Dr. Hauck and argue that the chip's function of outputting data in a fixed "predeterminable order" allows the trace memory to "capture and store the LE outputs such that the relative memory location in which the LE outputs are stored in the trace memory is `predeterminable.' Defs.' Opp'n, at 8; See Tr., at 2363:18 — 2364:6. Dr. Hauck also stated that the "predeterminable" limitation was satisfied, "because by having this fixed order [of the trace data] coming out, it's going to end up in a fixed location in the memory." Tr., at 2364:24 — 2365: 1. Dr. Hauck's testimony in this regard was neither conclusory nor inconsistent with the Court's claim construction.
In the Claim Construction Order, the Court rejected the defendants' contention that the "deterministic locality topology" required that the debugging circuitry be hardwired to the LEs and that the signal state values of the LE always appear in the same position in the output pattern. See Claim Construction Order, at 17. The Court rejected this argument as an attempt to read in an additional limitation not required by the language of the claims, and justified its rejection of the argument with illustrative examples from the specification of embodiments of the invention without hardwiring or a fixed output order. A finding that the defendants proved that a particular reference contained an additional limitation does not mean that they failed to prove that the reference anticipated the claim.
Although the interrogatory response claims "all the on-chip crossbar, trace and trigger, and memory emulation structure and functionality," the plaintiffs argue that the response does not claim, and the Meta-128 chip does not include, "trace memory coupled to the FPGA." See Pls.' Mot., at 11. Dr. Hauck testified at trial that the Electronique article discloses the Meta-128 chip coupled to trace memory.See Defs.' Opp'n, at 9; Tr., at 2359-2360. Dr. Kean confirmed this testimony. See Defs.' Opp'n, at 9; Tr., at 1515-1520. The plaintiffs argue that the Electronique article is not Sufficiently detailed to disclose trace memory with the limitations of the `827 patent. See Pls.' Renewed Mot., at 11. The Court disagrees. The testimony of Dr. Kean and Dr. Hauck, supported by Mr. Murray's reverse engineering report and Meta schematics, supports a reasonable inference that the Meta-128 chip by itself performs all of the functions of claim 1 of the `827 patent except for storing trace data, and that the Electronique article describing the Meta-128 chip connected to trace memory would be all that is necessary for a person having ordinary skill in the art to use the invention of claim 1. Since the Meta-128 chip was held to be "on sale" in the United States in 1992, the chip and its functions were disclosed to the public as a matter of law. See generally Abbott Lab, v. Geneva Pharms., Inc., 182 F.3d 1315, 1319 (Fed. Cir. 1999); Pfaff v. Wells Electronics, 525 U.S. 55, 67 (1998).
3. The Xilinx "Readback" Feature and the "Splash2 Machine"
The defendants also presented evidence at trial which, they asserted, showed that the Xilinx "readback" feature and the "Splash2 Machine" also invalidated claim 1 of the `827 patent, either by anticipation or obviousness. As the Court finds that either the Teramac or the Meta emulation system would be a sufficient basis alone to support a jury's finding of invalidity due to anticipation, the Court need not reach the evidence and arguments concerning these references. For the foregoing reasons, the Court affirms the jury's finding that claim 1 of the `827 patent is invalid as anticipated by the prior art.
B. Obviousness
Because the evidence supports the jury's finding that claim 1 of the `827 patent are anticipated by prior art, it also supports the finding that it is obvious. "Though it is never necessary to so hold, a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for anticipation is the epitome of obviousness. The reverse is not true, for the need to determine obviousness presumes anticipation is lacking." Connell v. Sears, Roebuck Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (citation and internal quotation marks omitted). See also In re McDaniel 293 F.3d 1379, 1385 (Fed. Cir. 2002); In re Skoner, 517 F.2d 947, 3950 (CCPA 1975);In re Kalm, 378 F.2d 959, 962 (CCPA 1967). Because the Court finds that the jury's finding of invalidity for anticipation by prior art is supported by the evidence, the Court also affirms the jury's finding of invalidity for obviousness.
C. The Written Description Requirement
As noted above, the jury also found that claim 1 of the `827 patent was invalid for failure to satisfy the written description requirement under 35 U.S.C. § 112. Jury Verdict, Question 11. As noted above, this is a question of fact for the jury and evaluates the adequacy of the specification in showing that the inventor had possession of the claimed invention. In re Alton, supra, 76 F.3d at 1172. The written description requirement is separate from the enablement and best mode requirements, which are also contained in 35 U.S.C. § 112.Id., at 1176: Vas Cath, supra, 935 F.2d at 1563-64. With the written description requirement, "the question is not whether [one skilled in the art] would be so enabled but whether the specification discloses the compound to him, specifically, as something appellants actually invented." In re Ruschig, 379 F.2d 990, 995 (C.C.P.A. 1967).See In re DiLeone, 436 F.2d 1404, 1405 (C.C.P. A. 1971) ("[I]t is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.").
The dispute hinges on the distinction between hardware and software approaches to the same function. The defendants asserted at trial that the patent claim is invalid because its claims cover both hardware and software approaches, while the specification shows that the plaintiffs were only in possession of the hardware approach. The plaintiffs assert, in their motion, that the hardware approach in the specification was merely a preferred embodiment of their invention, and that the defendants misconstrue the written description requirement as requiring the specification to describe both a preferred embodiment and the defendants' embodiment "that happens to fall within the claim." Pls.' Renewed Mot., at 21. The Court notes here that the jury was instructed that "[a] requirement in a claim need not be specifically disclosed in the original patent application if persons of ordinary-skill in the field reading that application would understand that the missing requirement must necessarily be present." Jury Instructions, at 46. The plaintiffs also assert that the "[d]efendants concede that their written description defense is based solely on Dr. Hauck's opinion that the `827 patent does not describe how to `program in' debugging circuitry into the logic chips." Pls.' Reply, at 12. This is simply not the case, and for the reasons described below, the Court finds that the evidence offered at trial supports the jury's finding that the patent claim is invalid for failure to satisfy the written description requirement.
The defendants' argument for invalidity for failure to satisfy the written description requirement was based-on Dr. Hauck's testimony, the patent specification and claims, and the testimony of the inventors, Mssrs. Barbier, Reblewski and Lepape. Defs.' Opp'n, at 24-25. Dr. Hauck testified that the patent claims cover both hardware and software approaches, but that the specification shows that the patentees were not in possession of the software approach. See Defs.' Opp'n, at 24; Tr., at 2372 (attached to Ward Decl.). Dr. Hauck's testimony indicated that the software approach was an alternative to the hardware approach, not an additional limitation. The French inventors testified in depositions that they were not in possession of a software approach.See Defs.' Opp'n, at 25. This is not a case of the defendants interpreting the patent law as a requirement to describe every possible embodiment of the invention ad infinitum or risk invalidation. "It is a truism that a claim need not be limited to a preferred embodiment. However, in a given case, the scope of the right to exclude may be limited by a narrow disclosure." Gentry Gallery v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998)
The Gentry Gallery case, to which both parties cite, is somewhat analogous to this case. The patentees in Gentry Gallery claimed a reclining sofa such that the reclining controls could be placed anywhere on the sofa, but the court found that the specification showed that the invention of which the patentees were in possession was limited to a reclining sofa with controls mounted on a console between the seats. Id., at 1479. As such, the court found that the patent was invalid for failure to satisfy the written description requirement. Id., at 1480. Similarly, here the defendants made the case at trial that the specification of the `827 patent showed that the invention of which the patentees were in possession was limited to an apparatus that incorporated a hardware approach. As noted above, and as the plaintiffs emphasize in their moving papers, the patent was entitled to a presumption of validity. 35 U.S.C. § 282. As the plaintiffs also note, the prosecution history showed that the patent claim was substantively amended during prosecution. The jury was entitled to weigh this fact along with all of the other evidence at trial. As noted above, the defendants presented evidence at trial to support this argument, and the Court finds that the evidence was sufficient to support a finding that the claim 1 of the `827 patent was invalid for failure to satisfy the written description requirement.
II. Motion for a New Trial
Plaintiff Mentor Graphics has also moved for a new trial regarding the validity of the `827 patent, as well as damages for infringement, on the grounds that the jury's verdict is against the clear weight of the evidence. Pl.'s Renewed Mot., at 1. After considering the evidence introduced at trial and the arguments of the parties about that evidence, the Court is not left with a definite and firm conviction that the jury erred in finding the patent claims at issue invalid. See Landes, supra, 833 F.2d at 1371-72. Accordingly, the motion for a new trial on these issues is DENIED.
CONCLUSION
For the foregoing reasons, plaintiff Mentor Graphics' motion for judgment as a matter of law regarding the validity of Claim 1 of the `827 patent is DENIED. Accordingly, the motion for a new trial on damages for infringement of the `827 patent is also DENTED. Finally, plaintiff's motion for a new trial regarding the validity of Claim 1 of the `827 patent is DENIED.